The Trademark Act, 1999 has established certain guidelines that act as specific distinguishers between the goods or services that are presented from other identical goods or services from a different business. A registered mark cannot be registered if it is ascertained to be objectionable, lacks distinctiveness, and contains government emblems.
Nevertheless, it is crucial to restore and revive trademark registration as it is has a tangibility of 10 years. Trademark registration revival can be accomplished starting from 6mos before the date of its expiry. A notice for trademark revival is transmitted before the date of expiry. Hence, the trademark renewal process involves step by step procedure as per trademark law to renew a registered trademark.
It is necessary that the applicant timely initiates the revival process of a trademark. If a third party or the applicant neglects to restore the trademark then the registrar may eliminate or remove the trademark from the Trademarks journal. This removal, however, occurs only after 12mos after the expiry date. In the interval between 6 and 12mos after the expiry date, the trademark registration can be revived on payment of a fine through a method called restoration.
Thus, this form is filed when a renewal of a trademark is to be initiated under section 25 of the Act, a petition for Renewal with surcharge under the proviso of section 25(3), or a request for restoration of a trademark under section 25(4). The applicant is such instance, is the registered owner of the mark. In the Form, the applicant is expected to furnish his important details, the specifications of the trademark and class, and the necessary information of their representatives or trademark agent.
Also, the fees for revival request and application under section 25 is Rs. 10,000 when executed through physical filing or Rs. 5000 when executed through E-filing. The fees for renewal with surcharge is Rs. 5000 when executed via physical filing and Rs. 4500 when executed vis E-filing, plus the necessary renewal fee. Lastly, for a request or application for renewal with surcharge/ restoration and renewal under sections 25 (3) and 25 (4), the fee is Rs. 10,000 when executed vis physical filing or Rs. 9000 when executed via E-filing, plus renewal fee.
Under the Trademark Act, there are two types of Trademark renewals. Firstly, the trademark renewal can affect the alteration and change of sign or logo of the registered trademark. On the other hand, such a form can also be brought about without any change in the trademark.
Thus the documents needed for it include a copy of the trademark registration certificate, the power of attorney to embody the applicant, the photo Id and address proof of the applicant, and a copy of the application form of Trademark registration.
The application for trademark registration renewal via the form TM-R is filed by the registered proprietor of the trademark or an agent appointed by him. By filing such a renewal application for a trademark the applicant or its representative intends to renew their trademark for another 10yrs.
The applicant must regularly check the status of the application until it is processed by the registrar. The trademark journal of the registry oversees the status of accepted or rejected forms. If the application is approved then it is published in the journal and the renewal procedure commences 3 to 6mos before the expiry of the mark.
The application for trademark registration renewal can be filed within a year before the expiry of the trademark as per Rules 57 and 58 in Trademark rules 2017. The renewal application can be instituted within 6mos before the expiry of the trademark as per Rules 63 and 64 in Trademark Rules 2002. The renewal application can furthermore be instituted within 6mos after the date of expiry of the mark.
Another component of the application initiated by Form TM-P is that a mandatory notice from the Office of the Registrar of Trademarks must be sent to the relevant parties. The office of the registrar will deliver a notice 6mos before notifying the owner about the deadline for renewal. If the trademark is not restored within a given time then the trademark will be withdrawn from the register of Trademarks. Nevertheless, the trademark can be reclaimed by applying along with the necessary fee.
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Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter.
Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech).
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