Trademark Renewal in India: Form TM-R and Restoration

What Is Trademark Renewal?

A registered trademark in India is valid for ten years from the date of the application, as Section 25 of the Trade Marks Act, 1999 provides. To keep the mark on the register, the owner has to renew it before it expires, and the renewal runs for a further ten years from the date of expiry of the earlier registration. The renewal can be repeated every ten years for as long as the owner wants to keep the mark, which makes a trademark one of the few business assets that can last indefinitely if it is maintained.

Renewal is done by filing an application in Form TM-R with the Trade Marks Registry, together with the prescribed fee. The Registry does not remind every owner in time, and many owners forget about renewal because ten years is a long gap. A trademark that is not renewed is removed from the register after a grace period, and the owner loses the exclusive right to the mark. If another party has applied for the same or a similar mark in the meantime, the owner can find it difficult to get the mark back.

When to Renew

• Before expiry: the renewal application can be filed in the period before the date of expiry that the Rules allow, which can be as early as one year before. Filing early is the safest way to avoid a lapse.
• After expiry, within the grace period: if the registration has expired, the owner can still renew it within six months from the date of expiry by paying a surcharge in addition to the renewal fee.
• After removal from the register: if the mark has been removed for non-renewal, the owner may apply to restore it and renew it, within the time the Act provides, and subject to the Registrar's decision. This is more costly and uncertain.

Because the dates are counted from the date of application and not from the date of registration, many owners calculate the expiry date incorrectly. We check the date for you from the registration record.

Why Renewal Should Not Be Postponed

• A lapsed trademark cannot be enforced. The owner loses the right to sue for infringement and has to depend on the law of passing off.
• Marketplaces, licensees and franchisees often require the mark to be live. A lapsed mark can affect brand programmes and agreements.
• A third party can apply for the same mark once it is removed from the register, and the earlier owner then has to oppose or file again.
• The renewal fee is small compared with the value of the brand that it protects.
• If the mark was assigned or the owner's details have changed, the register has to be updated before or with the renewal.

What Our Trademark Renewal Service Includes

• A check of the registration details: the application number, class, date of application and date of expiry.
• A check of the owner's name, address and constitution on the register, and advice on any change that has to be recorded before renewal, for example, after a change in name, address or ownership.
• Preparation and filing of the renewal application in Form TM-R, with the power of attorney.
• Filing of a renewal with surcharge or a restoration application, if the registration has already expired.
• Renewal for multiple classes or multiple marks in one engagement.
• Tracking of the application and delivery of the renewal certificate and the updated register record.
• A renewal reminder for the next cycle and, where you ask for it, a portfolio schedule of all your marks and their dates.

How the Process Works

You send us the registration certificate or the application number. We look up the record on the Registry's database, confirm the expiry date and check whether the owner's details on the register match the present facts. If they do not, we advise on filing a request to record the change. We then prepare the renewal application and share the details for your confirmation. After filing, we track the application until the Registry updates the register and issues the renewal certificate. If the date has passed, we advise on whether a renewal with surcharge or a restoration is the right route. The time to file is short, though the Registry's processing time varies.

Important Considerations

• Renewal is processed by the Registry. We cannot guarantee a particular date for the updated record, but a timely filing protects the mark.
• Renewal does not need proof of use, but a mark that has not been used for a long period may face a removal action by a third party for non-use. Please keep records of use.
• If the owner's details have changed or the mark has been transferred, the register must be updated, and a renewal in the wrong name can lead to objections.
• Renewal fees and surcharge differ by the mode of filing and the type of applicant. The fee is paid per class.
• Restoration after removal, and any dispute about ownership, are separate matters that may need an advocate.