Trademark Renewal

Trademark owners have the privilege of extending the validity of their trademark every decade. As the ten-year period approaches its end, the Registrar provides a six-month grace period, allowing the trademark holder to renew their mark and maintain its benefits. Failure to renew within this timeframe results in the Registrar announcing the removal of the trademark in the Trademark Journal.

Trademark Renewal Provision (Section 25)

As per the Trademarks Act of 1999, a registered trademark is eligible for renewal for an additional decade after the expiration of its initial registration or its latest renewal. To initiate the renewal process, the trademark owner must formally apply to the Registrar of Trademarks within the prescribed timeframe and adhere to the established guidelines. Upon submission of the application along with the requisite fee, the Registrar will proceed to extend the registration of the trademark for another ten years.

Deletion of Registered Trademark Due to Non-Renewal (Section 25)

Before a trademark’s registration expires, the Registrar must notify the trademark owner about the impending expiration and the terms for its renewal. The Registrar has the authority to remove the trademark from the register if these renewal requirements are not fulfilled within the allotted time frame.

However, the Act does allow a grace period of six months after the expiration date. During this window, the trademark owner can still renew their mark by settling a surcharge in addition to the regular renewal fee.

Moreover, in cases where a trademark has been delisted due to the non-settlement of the renewal charge, the trademark holder can request reinstatement within a year from the last registration’s end date. The Registrar can reinstate and renew the trademark upon receipt of this application and the required fee; however, there may be additional restrictions or conditions.

Methods of Renewing Your Trademark

Renewing a trademark can be done in two main ways:

• Renew with alterations: During the renewal process, you can update signs or words in the current trademark by selecting this option.
• Renew without alterations: This option permits the trademark to be extended without making any changes to its current text or design.

Documents Required for Trademark Renewal

When submitting the TM-12 renewal form to the Registrar of Trademarks (RoT) for renewing a registered trademark, the following documents must be provided:

• A certified copy of the original certificate of trademark registration.
• A certified copy of the TM-A form used throughout the initial trademark registration.
• Identification proof of the applicant.
• Residence proof of the applicant.
• A Power of Attorney if the applicant is representing the trademark owner.

Deadline for Filing Trademark Renewal

• A trademark renewal application needs to be submitted prior to the mark’s expiration. The application for renewal may be started as early as one year before the trademark’s expiration, although the actual deadline is six months prior to that date.
• Assume that a trademark’s registration has expired since it was not renewed by the deadline. If so, renewal is still possible within six months of the expiration date, but it will cost extra on top of the regular government renewal fee.
• If the trademark is not renewed before expiration or within the next six months (at an additional cost), the registration will be cancelled.

On the other hand, a trademark may be recovered in the case that it is cancelled. It is necessary to apply for reinstatement within six months of the cancellation.

Procedure for Trademark Renewal

Your trademark will be protected for a long time thanks to the comprehensive trademark renewal process. The following is an overview of the actions required and associated documentation: