The registration of a trademark is valid only for a period of 10 years. After which, it can be renewed from time to time. Trademark renewal preserves those rights which are only available to a registered mark. In case the proprietor fails to renew the trademark, then he shall lose all the protection that comes along with registration. For example, a registered trademark has the benefit of the legal presumption of ownership. That means that the burden of proof is on others to try and disprove your ownership.
Procedure for Trademark Renewal
The proprietor of the trademark has to file a prescribed form [TM-12], which is an application for renewal before the Registrar. This application can be filed on or before 6 months from the date of expiration of the registration.
1 – 3 months before the expiration of the registration, if no application for renewal has been filed, then the Registrar shall send a notice to the proprietor informing him of the upcoming renewal date. Keep in mind that no trademark can be removed, if notice of renewal has not been served.
Along with the application for the renewal, the proprietor has to pay renewal fees as prescribed. Failure to pay such fees will cause the removal of the Trademark from the register.
Consequences of failure to renewal of trademark
The consequences of not renewing the trademark are severe. In case, no application for renewal has been filed, or in case no fee for renewal has been paid by the proprietor, the Registrar may remove the mark from the register.
Before removing the trademark, the Registrar shall first advertise his intention to remove the mark by advertising the notice to remove in the trademark journal.
Failure to renew affects not just the proprietor but also all those people who are either assigned or licensed the trademark. It also affects your legal rights, by not renewing your trademark, in effect weakens your legal position. A registered trademark has the benefit of exclusiveness. Registration protects you from infringement claims. However, the most important benefit of renewal is that it deters other people from using your mark.
The Trademark Act is very sympathetic to the woes of the proprietor and has therefore provided another chance to renew the trademark within 6 months after the date of expiration of registration by a filing prescribed form [TM-10] and by paying the surcharge.
Restoration of Trademark
If in case the renewal period has lapsed and no application was filed prior to the expiration, then the proprietor can apply for restoration of the trademark. However, such an application has to be made from 6 months to 1 year after the date of expiration of such registration. The proprietor has to file a prescribed form [TM-13] to request restoration.
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.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.