- Achyuth Rao N
Renewal of Trade Mark Registrations in India
Like many other countries, an Indian trademark registration remains valid and subsisting for a period of ten (10) years from the application date. It is pertinent to note that, in India, the registration date is the same as the application date. Therefore, the ten (10) year renewal date is counted from the date of filing of an application. A registration must be renewed in order for it to remain valid and subsisting. Under the new rules governing trademark law that came into force in 2017, a registrant can file a renewal request one year prior to the actual renewal date. So, for instance, if the ten (10) year anniversary of a registration expires on March 15, 2020, the earliest date on which a renewal request can be filed is March 15, 2019.
The procedure to renew a registration is simple. A registrant must file a renewal request at the Trade Marks Registry (“Registry”) in the form prescribed by the Trade Marks Rules, 2017. Evidence of continued use of a mark or any use of a mark is not required, nor are any declarations/affidavits required to support a renewal request. The Registry will not make any inquiries regarding use of a mark prior to approving a renewal request.
Unlike many other jurisdictions, the law requires the Registry to serve, on a registrant, a written notice called an O-3 notice to inform the registrant of an upcoming renewal deadline. A registration can only be removed from the Register of Trade Marks if and only if it can be proved that the Registry sent an O-3 notice to a registrant, and the registrant failed to timely file a renewal request despite service of the notice. Therefore, the law is settled that a registration cannot be removed from the Register of Trade Marks if a registrant successfully demonstrates that it did not receive an O-3 notice from the Registry.
Furthermore, there is precedent that states that if a renewal request is filed, and there are defects in the request, the Registry must timely notify a registrant of these defects. Non-notification cannot prejudice a registrant’s rights.
Clearly, and quite rightfully, Indian courts have repeatedly been taking the stance that trademark registrations cannot be deemed removed unless all steps have been taken to inform the registrant of such impending removal. Courts have also emphasized that haphazard functioning of the Registry cannot deprive a registrant of its rights. The Registry is duty bound to inform a registrant of approaching expiration dates and/ or any deficiencies found in the renewal application. If this is not done, then a registration can be renewed even if a large amount of time has passed since the expiration of the registration.
It is also pertinent to note that, after the expiration of the initial ten (10) life of a registration, a registrant is entitled to a six (6) month grace period within which a renewal request may be filed with surcharge. Although a registration expires at the end of the grace period, the law allows a registrant to file a restoration petition within a one (1) year period from the expiration of the registration.
The Registry has, in recent times, expedited processing of renewal requests. Such is the processing speed, that registrations can be renewed within days of filing of renewal requests.