Module_6

MODULE 6

RENEWALS AND RESTORATION OF TRADEMARKS

6.1 RENEWAL

Trademark renewal is a unique right as trademark is the only Intellectual Property in which the
rights are perpetual. The mark continues to stay on the Register. There is no statutory limit for
how long the mark can remain registered as long as it is renewed diligently by the registered
proprietor.

Every Trademark Branch has a Renewal, Restoration and Amendment (RR&A) section which
exclusively deals with the renewal of trademarks.

Under section 23(1) of the Trademarks Act, 1999, trademark registration date is the date the
application was filed i.e. if an application has been filed on the 01/01/2000 and it gets registered
on 01/01/2005, the registration will be valid for 10 (ten) years from date of application meaning
since 01/01/2000 till 01/01/2010. Please note that the period is calculated from the date of
application and not from the date the mark was entered into the Register. If a mark is entered on
the register after more than ten years, then the Applicant will be required to file a Renewal form
i.e. TM-R within 6 (six) months.

Section 25(1) of the Trademarks Act states that the trademark registration is valid for ten (10)
years and after that it needs to be renewed. Earlier, the period of registration used to be for 7
(seven) years. This period was revised in 1999.

6.1.1. Who can file for renewal?

Only the registered proprietor can renew a trademark registration. If the said renewal is being
done by the Assignee, then in that case, the Assignment deed is required to be attached along
with the renewal form.

6.1.2. Can a licensee or a registered user renew a trademark?

A trademark cannot be renewed by a licensee or a registered user as it is not the legislative intent
of the Trademarks Act, 1999- Section 25(2) “… The Registrar shall, on application made by the
registered proprietor of a trade mark in the prescribed manner and within the prescribed
period.”.

The said proposition was discussed in a case R.G. Oswal Hoseiry Industries v. Union of India1
wherein it was held that-

“Para 23. Therefore the legislative intent even under the new regime brought out by the TM Act,
1999 and the TM Rules, 2002 is that an application for the renewal of the registration of a
trademark can be made only by a registered proprietor and not by a licensee of such registered
proprietor.”

Sometimes, the applicant forgets to file the Renewal Form. In such a scenario, before the expiry
of the trademark application, the Trademark Office, under Section 25(3) of the Trademarks Act,
1999 and Rule 58 of the Trade Mark Rules, 2017, is obligated to send the registered proprietor a
Notice under Form RG-3, at least six months prior to the expiry of registration. The relevant
provision is reproduced below:

Section 25(3): At the prescribed time before the expiration of the last registration of a trade
mark the Registrar shall send notice in the prescribed manner to the registered proprietor of the
date of expiration and the conditions as to payment of fees and otherwise upon which a renewal
of registration may be obtained, and, if at the expiration of the time prescribed in that behalf
those conditions have not been duly complied with the Registrar may remove the trade mark
from the register: Provided that the Registrar shall not remove the trade mark from the register
if an application is made in the prescribed form and the prescribed fee and surcharge is paid
within six months from the expiration of the last registration of the trade mark and shall renew
the registration of the trade mark for a period of ten years under sub-section (2).

1 R.G. Oswal Hoseiry Industries v. Union of India, 2012 (50) PTC 21 (Del-DB).

Note: The RG-3 notice is generated automatically by the Trademark Automation System (TMAS)
and is usually sent by registered post and e-mail.

If the RG-3 is not sent to the Registered proprietor/Joint Proprietors on behalf of the Trademark
Office, then, even if you do not file the renewal within the expiry date of the mark, the mark
cannot be removed from the Register. The said principle was elucidated in Malhotra Book Depot
vs. Union of India2 by the single judge of the Delhi High Court-

“Para 16. The scheme of the Act and the Rules, therefore, is that before the removal of the mark
from the register, the Registrar must give prior notice in form O-3 to the registered proprietor or
to each of the joint registered proprietors in writing, putting them to notice of the impending
expiry of registration of the mark. The removal of the registered mark from the register entails
civil consequences for the registered proprietor of the mark. The said removal of the registered
trade mark, in the scheme of things, therefore, cannot be done without prior notice to the
registered proprietor/joint proprietors in the prescribed form. The mere expiration of the
registration by lapse of time, and the failure of the registered proprietor of the trade mark to get
the same renewed, by itself, does not lead to the conclusion that the same can be removed from
the register by the Registrar of Trade marks without complying with the mandatory procedure
prescribed in Section 25(3) of the aforesaid Act or read with Rule 67 of the aforesaid Rules.
Removal of the registered mark from the register without complying with the mandatory
requirements of Section 25(3) of the aforesaid Act read with Rule 67 of the aforesaid Rules
would itself be laconic and illegal.”

The said principle is based on the concept of Audi Altrem Patrem which means “hear the other
side too” before an order is passed. This ruling was upheld by the division bench of Bombay
High Court in Cipla Limited Vs. Registrar of Trademarks and Another3.

It is also important that the RG-3 notice has to be provided by the Trademark Office in order to
be able to prove that Section 25(3) of the Trademarks Act, 1999 was complied with. If the
Trademark Office is unable to provide RG-3, it will not be considered valid service. This was

2 Malhotra Book Depot v. Union of India, W.P No. 7882 of 2010.
3 Cipla Limited v. Registrar of Trademarks and Another, Writ Petition No.1669 of 2012.

expounded upon by Court Receiver, High Court, Mumbai v. Registrar of Trademark4 of the
Bombay High Court by order dated 4th of October, 2016 in paragraph 6-

“In the peculiar facts and circumstances of the case, we are of the view that there is total non-
compliance of the provision Section 25(3) of the Act read with Rule 64(1) of the Rules before
taking impugned action against the Petitioner. Our views finds support from the law laid down
by the Division Bench of this Court in para 5 to 7 in the case of CIPLA limited.”

6.2 RENEWAL FORM

An application for renewal of registration of trademark has to be made on Form TM-R
(Application for renewal) at the appropriate office or Head Office of the Trademarks Registry, at
any time, not more than six months before the expiration of last registration of the trademark.
The fee for renewal is INR 10,000 per class.

Once a trademark is renewed, the Trademark Office is required to send a written intimation to
the registered proprietor and the registered user and the same has to be advertised in the
Trademark Journal under Rule 61 of the Trademark Rules, 2017.

6.2.1. Renewal Process

Once the renewal application is filed the same is scrutinized by the Renewal section. The same is
checked to see if there are any objections to the said renewal. It is important to regularly check
the status of the Renewal Form until it is changed, and action taken by the Registrar. Once the
mark is renewed, it is notified in the Trademark Journal. The registered proprietor is sent a
Renewal Certificate.

6.2.2. Benefit of Trademark Renewal

The benefits of Trademark renewal, from time to time, is that the Proprietor of the Trademark
will be protected from its infringement.

4 Court Receiver, High Court, Mumbai v. Registrar of Trademarks, W.P. No. 1259 of 2015.

6.3. RESTORATION

The Trademarks Act, 1999 grants the registered proprietor the right to restore its trademark back
to the Trademark Register within one year after the expiry of the renewal period. The same is
enumerated under Section 25(4) of the Trademark Act, 1999-

Section 25 (4) Where a trade mark has been removed from the register for non-payment of the
prescribed fee, the Registrar shall, after six months and within one year from the expiration of
the last registration of the trade mark, on receipt of an application in the prescribed form and on
payment of the prescribed fee, if satisfied that it is just so to do, restore the trade mark to the
register and renew the registration of the trade mark either generally or subject to such
conditions or limitations as he thinks fit to impose, for a period of ten years from the expiration
of the last registration.

Hence, the trademark can be restored on the register even one year after it has expired.
Therefore, if a mark expires on 01/01/2000, it could be restored to the Register till the
01/01/2001. This is the law applied in practice by the Trademark Office.

The application for restoration has to be filed on Form TM-R (Application for restoration). The
fee for the same is time-bound-

a. If the application for restoration is filed after the expiry of the mark but within 6 months
of the expiry, it will be INR 15,000 per class;

b. If the application for restoration is filed after the expiry of the 6 months but within a year
of the expiry, it will be INR 20,000 per class.

6.4. REMOVAL

In case no request for renewal of registration of trademark has been filed on behalf of the
registered proprietor even up to one year after the expiration of last registration, the Trademark

will be removed from the Register as from the date of expiration of its last registration
irrespective of the actual date of removal. The said removal will be notified on the Trademark
Journal. Once a mark is removed from the Register the same loses its validity.