What is the procedure to file trademark renewal late and its consequences ?

Trademark are further than bare symbols or names—they are the personification of a brand’s character, goodwill and distinctness of a business. In India, Trade Marks Act, 1999 provides for the protection of a trademark, ensuring that innovation and creation will be continuous ensuring the distinctiveness of good and services of different brands. However, law requires continuous vigilance: registration alone does not guarantee perpetual protection. Under Section 25(1) of TMA, a registered trademark is valid for ten years from the date of application of the last renewal. It means, a registered trademark has to be renewed after every 10 years to avail the benefit of protection under the statute.

Failure to renew the registration within time does not automatically strip the proprietor of rights—the law incorporated a structured procedure to renew the registered trademark and even for the renewing it late. However, non compliance with these requirements can result in removal of the registered mark, loss of rights and in potential disputes.

Procedure for Trademark Renewal under TM Act, 1999 and Rules, 2017

Indian Law has incorporated a structured procedure to renew the registered trademark and they have provided a grace period to renew it late. Failure to comply with this may lead to loss of the registered trademark and they again need to file an application for the registration of the trademark. Below is the detailed procedure for late renewal of trademark.

1. Normal Renewal (Section 25(1)-(2), Rule 57): The typical timing to renew the trademark is six months before the trademark’s expiry date. The brand renewing it, need to file Form TM-R along with specified fee. This ensures that the protection will be continuous.

2. Mandatory Notice by the Registrar (Section 25(3), Rule 64): The Registered of Trademark requires to issue a notice to the trademark proprietor. The notice i.e. Form RG-3, must be sent not more than six months before the trademark’s expiry. The objective to issue of the notice is to remind the proprietor of the renewal deadline. This provision is a safeguard which prevent the loss of trademark rights.

Under the earlier Trade Mark Rules, Rule 64 required the Registrar to notify the registered proprietor in writing using Form O-3 and this notification must be sent between one and three months before the registration expiration[1]. Therefore, the issuance of notice is a mandatory requisite to remove a registered trademark as per Section 25(3) read with Rule 64(1) of Trade Mark Rules, 2017 (the “Rules”). The Division Bench of Delhi High Court in case of Union of India v Malhotra Book Depot (2013) at para 13 reiterated:

“But the removal of the mark from the register has been made subject to sending of a notice in the prescribed manner calling upon the registered proprietor to renew the mark and permitted only upon the failure of the registered proprietor to do so LPA 564/2012 Page 16 of 28 [under Sub-Section (3)] and not merely on the failure of the registered proprietor to apply for renewal within the prescribed time.”

3. Grace Periods/Late Renewal (Section 25(3), Rule 58): The law even further provides a safeguard if anyone has missed the initial renewal deadline. The grace period of six months after the trademark’s expiry. Even in this period, you can still file Form TM-R to renew the registered trademark. However, this delay filing comes along with a surcharge in addition the standard renewal fee. The law has given a second chance to avoid the complete loss of the registered trademark.

4. Removal of Trademark (Section 25(3)): If the proprietor has failed to file for renewal even during the grace period, the Registrar may process with the removal of the trademark from the Register. This will do only when the mandatory requirement Form RG-3 notice was duly served to the proprietor. After this step, all the legal protection given to the registered trademark has come to an end, and makes it vulnerable to use by others.

5. Restoration of Trademark (Section 25(5), Rule 61): The law even further provides for the last recourse, that is, the proprietor can still apply for the restoration of the trademark within one year of its expiry date. It is done by filing Form TM-R along with an additional fee and surcharge. However, this process of restoration is completely discretionary, it means, that the registrar has the authority to approve or deny the request made by the proprietor. Furthermore, similarly to the registration of a new trademark, this restoration may face objections from third parties, especially if they have started using a similar mark during that period. This makes restoration a more complex and uncertain process than late renewal of trademark.

CONSEQUENCE OF LATE RENEWAL OF REGISTERED TRADEMARK

If a proprietor fails to renew a registered trademark, they can face various consequences which are listed below:

1. Removal from Register: The late renewal of trademark within the stipulated time given by the statute is 10 years and the law even provides for the grace period. If the brand fails to comply with this period, Registrar of Trademarks is empowered under Section 25(3) of TMA, to remove the mark from the Register. Once it has been removed, the brand will be deprived of its legal protection.

2. Open to Third Parties: The late renewal of registered trademark, open to third-parties which open up the competitors in the market which further cumbersome the process of renewal, as some other brand may apply for the registration of deceptively similar marks, potentially leading to confuse the customers.

3. Business Disruption: Trademarks are not merely the legal rights but also the corporate assets. The late renewal of trademark might lead to the disrupt marketing, branding and contractual commitments.

4. Risk of Dilution: There’s a risk of Dilution when a proprietor registers its trademark late. This late renewal can weaken the legal protection and some other brand can file for the rectification for the registration trademark which may further lead to the loss of all the legal rights given to the registered trademark.

CONCLUSION

Trademark renewal is not merely a formality but a safeguard given by law to preserve the exclusivity, goodwill and commercial value of a brand. The Trademark Marks Act, 1999 and the Rules, 2017, has given a structured procedure for late renewal of a registered trademark. At the same time, At the same time, the law ensures fairness by mandating the issuance of notice from the registrar office to remind the proprietor of its renewal of trademark.

However, there are various consequences attach to it. In a competitive place, where brand value and its identity are the most valuable corporate asset which not only contributes to its growth but also maintain its reputation. Thus, it is necessary to timely renewal of a trademark to avail the legal protection given by the statute.