The consequences of failing to renew a trademark pose a tangible risk to the integrity and recognition of globally acclaimed brands. Beyond the legal intricacies, it highlights the necessity of trademark renewal in safeguarding businesses from infringement. For example the Coca-Cola brand is known worldwide for its refreshing beverages and distinctive red and white logo. If Coca-Cola neglects to renew a trademark, then a competitor could potentially adopt a similar logo, leading to confusion among consumers. This could result in customers purchasing a different beverage, under the pretense of Coca-Cola. This could happen with any big business, hence it is necessary to renew the trademark. In this discussion, we’ll delve into the significance of trademark renewal and provide a detailed guide on its renewal process.
Understanding Trademarks and the Renewal Process
A trademark, according to the WIPO that is commonly known as the World Intellectual Property Organization, is a symbol that can be used to differentiate the products or services of one company from those of other companies. In India, the Trade Marks Act of 1999 (“the Act”) under Section 2(1)(zb) outlines three essential characteristics for a legally valid trademark: firstly, it must be graphically representable; secondly, it must possess the ability to differentiate a company’s products or services; and thirdly, it may encompass product shapes, packaging, and color combinations.
The Act along with the Trade Marks Rules of 2017 deals with the intricacies of trademark registration, renewal, ownership and enforcement. When a trademark is officially registered under the Act, it is initially protected for 10 years. To extend this duration beyond the initial 10-year term, to renew a trademark is required. Renewal requests fall into two distinct categories–the first involves renewing the trademark without any alterations; while the second involves changes to the existing trademark.
Trademark Renewal Procedure – A Step by Step Guide
In order to renew trademark follow the steps given below:
Filing Application to Renew a Trademark
The owner or their authorized representative (collectively referred as “owner”) must submit the renewal application in Form TM-12 to the Trademarks Registrar along with the required fee (failure to pay requisite free will amount to removal of trademark). This should be done at at least 6 months before the current trademark registration expires, if the owner fails to submit the renewal application, the Registrar must inform them about the expiration date and renewal process in Form O-3. This notification should be sent before 3 months of the trademarks expiration. Without this notice, the trademark cannot be removed from the register.
Examination and Processing
Once the application to renew a trademark is submitted to the registrar of the trademarks the very first thing the registrar is going to do is verification of the application. The Registrar examines the application to ensure its compliance with the requirements. Upon satisfaction, the registrar will renew the application for a further 10 years. If not satisfied your application to renew the trademark may be rejected. Hence the application to renew the trademark must be filed carefully.
Issuance of Renewal Certificate
Once your verification is completed, the registrar will issue the certificate of renewal. This certificate can be issued only after the successful verification of the renewal application. A Renewal Certificate is issued by the Registrar to the owner of the trademark after proper verification. In any case if the verification is not successful which means if your application is not as per the guidelines your application may be rejected or clarification may be raised.
TM-12 Form Submission Checklist
Application to renew a trademark in Form TM-12 must be accompanied by the following:
- A properly executed Power of Attorney, if the applicant is the designated agent.
- A statement confirming the continued use of the trademark in commerce.
- Details of the trademark for which renewal is sought, including the registration number and class.
- Certified copy of Form TM-1/TM-2/TM-3/TM-4 (under which trademark was initially registered) and the Registration Certificate.
- Proof of payment of the fees for the renewal must be attached with the renewal application
Consequences of Non-Renewal of Trademark
Trademarks serve as distinctive symbols of quality, trust, and reputation in the marketplace.
Though their registration is not mandatory, it is highly advisable for individuals and businesses. Timely renewal not only upholds the legal rights associated with the trademark but also signifies an ongoing commitment to maintaining the quality and reputation associated with the brand.
Failure to renew a trademark can have severe consequences, including–removal of mark and subsequent registration. Before proceeding with the removal, the Registrar is obligated to publish their intent in the Trademark Journal. This step is taken to afford the owner an additional opportunity for renewal. Moreover, the Registrar will accept renewal applications up to 6 months after the expiry of registration, provided that the application is supplemented by the requisite fee and surcharge.
How does Renewal differ from Restoration?
The request for the former can be filed even before the expiration of registration, while the
the latter can only be filed after the expiration of the renewal period. The owner has to file a restoration application in Form TM-13 within 6 months and 1 year from the expiry of registration. The application will be advertised, and pursuant to no objections and the expiration of the prescribed waiting period, the mark will be restored in the register for a duration of 10 years.
What are the Key Benefits to Renew a Trademark?
The key benefits of renewing a trademark are discussed below:
- A renewed trademark ensures the ongoing protection.
- This not only safeguards the reputation of the brand but also prevents any unauthorized use that could dilute the distinctiveness of the brand.
- A renewed trademark is essential for preserving the market share. It prevents competitors from adopting similar brand elements, reducing the risk of confusion among consumers.
- Protects the uniqueness and distinctiveness of the goods and services associated with the mark.
Conclusion
In sum and substance, to renew a trademark by following the proper process is crucial for brand owners, serving as a medium for the preservation of their legal rights and the perpetuation of the distinctiveness of their trademarks. Trademark owners must adhere to the requirements of the renewal process. It will secure the TM for an additional period of 10 years and offers multiple benefits. However, failure to renew can leave the mark susceptible to infringement and dilution issues. Hence, to maintain a brand’s identity, trademark renewal should not be compromised.
