A trademark once registered has to be renewed every 10 years failing which the trademark is liable to be removed from the Register of Trademarks. An application for the renewal of a trademark shall be made in Form TM-R along with the prescribed fee of Rs. 9,000 (online filing)/ Rs. 10,000 (Physical filing) per class any time within 1 year before the expiry of trademark registration. Such an application can be filed by the registered owner by self or through his authorized representative
If no application is filed for renewal of trademark by the registered owner, The Registrar shall send a reminder notice to the registered owner. Such notice shall be sent during last 6 months prior to the expiry of registration. It is important to note that the trademark can be removed from the register only after such a notice has been served on the trademark owner
Further, the Trademark Act provides another chance to renew the trademark within 6 months after the date of expiration of registration by filing a prescribed form TM-10 and by paying additional fee of Rs. 3,000 as surcharge
Consequences of failure to renewal of trademark:
- If a trademark is not renewed by filing prescribed form and fees, the Registrar shall remove the trademark from the register. But before removing the trademark, the Registrar shall first advertise his intention to remove the mark by advertising the notice in the Trademark Journal
- If a trademark is removed, the trademark owner has two choices left:-
- Apply for restoration of trademark or
- Apply for fresh registration by filing a new application
- Cancellation of trademark registration debars the trademark owner from the benefits of exclusiveness attached with the registered trademark. Further, it also deters his position for infringement claims
Restoration of Trademark:
Where a trademark has been removed from the register for failure to pay renewal fee, the trademark owner can make an application for restoration of trademark in Form TM-13 accompanied with the prescribed fee (Rs.5, 000). But such application has to be made after a period of 6 months but before 1 year from the expiration of registration trademark validity. The power to restore a removed trademark is a discretionary power vested with the Registrar, wherein he shall be exercising his judgement on the material before him
After receiving applications to either renew or restore the trademark, the Registrar shall advertise the mark once again and invite objections from people who have reason to believe that the trademark should not be renewed or restored. After the lapse of the prescribed waiting period, if there are no objections raised, then the mark will be entered in the register of trademarks. The entry shall specify that the mark has been renewed for a period of 10 years
