Trademark Renewal

Sonam Geda & Company

Validity of Registered Trademark

Trademark once it gets registered in the Registers of trademark then it is valid for 10 years and subsequently it just needed to be renewed timely.

Duration to Renew a Trademark

There are two reasons when hearing notices can be issued

WITHIN 6 MONTHS BEFORE EXPIRATION - The renewal can be filed within six months prior to the date of expiry of trademark on receiving the electronically generated notice by the registry intimating about the renewal within the timeline. There will be no surcharge fee required.
WITHIN SIX MONTHS OF EXPIRATION - The renewal can be filed within six months after the expiry of registration or renewal in the prescribed manner along with late filing fees.
AFTER SIX MONTHS & WITHIN ONE YEAR OF EXPIRATION - The renewal can also be filed after six months and within one year from the date of expiration of the last registration of the mark.

Any further delay after six months and within one year of expiration of trademark is risky and attract more fees and documentation and in case if renewal is not completed within aforesaid period then it will lead to abandoned i.e. removed from the trademark register.

Once a trademark expires or abandoned then it becomes available in the public domain, and anyone can apply for registration and former applicant does not possess the right to oppose the new applicant who applying for abandoned trademark.

Document Required for Trademark Renewal

Following are the documents required for trademark Renewal:

A copy of the Registration Certificate
Power of Attorney
Aadhar card
Certificate of Incorporation(in case of LLP and company),
Shop establishment/GST Registration certificate for proprietor and partnership concern
Pan card of the Applicant

Notice of Renewal

The Registry of Trademarks will issue a notice six months before the expiration to the applicant with indicating the deadline for renewal of the trademark. In case non-renewal of the trademark within the stipulated time, the registry will be removed such trademark from the Register of Trademarks. However, it can be restored by filing an application with the required fee.

Benefits of Trademark Renewal

Filing a renewal application for trademark gives trademark wings for another 10 years and again it must be renew before expiry which results in protecting your brand name and right appurtenant there to.
Renewal of trademark assist to continue the brand usage for indefinite period.

What is Trademark?

A trademark is an intellectual property right which provides exclusive right to the brand of owner or business. A registered trademark is important intangible asset for any Business.
Trademark is a mark which may be in any of the form i.e. logo, slogan, word, name, device, graphics which gives unique identification to you and your business.
Trademark distinguishes its brand name under appropriate category of goods or services from other similar products or services originating from a different business. It gives a protective cover of the business's investment.

How often Trademark is needed to be renewed?

The Trademark is Valid for 10 years and can be made perpetual by renewing it in every 10 years.

Which documents are required for Trademark renewal?

Following are the documents required for trademark Renewal:

A copy of the Registration Certificate
Power of Attorney
Aadhar card
Certificate of Incorporation(in case of LLP and company),
Shop establishment/GST Registration certificate for proprietor and partnership concern
Pan card of the Applicant

When notice of renewal issued by Trademark Registrar?

What are the advantages of Trademark renewal?

Filing a renewal application for trademark gives trademark wings for another 10 years and again it must be renew before expiry which results in protecting your brand name and right appurtenant there to.
Renewal of trademark assist to continue the brand usage for indefinite period.

When Trademark renewal can be filed?

WITHIN 6 MONTHS BEFORE EXPIRATION - The renewal can be filed within six months prior to the date of expiry of trademark on receiving the electronically generated notice by the registry intimating about the renewal within the timeline. There will be no surcharge fee required.
WITHIN SIX MONTHS OF EXPIRATION - The renewal can be filed within six months after the expiry of registration or renewal in the prescribed manner along with late filing fees.
AFTER SIX MONTHS & WITHIN ONE YEAR OF EXPIRATION - The renewal can also be filed after six months and within one year from the date of expiration of the last registration of the mark.

What is difference between Trademark and different form of Intellectual Properties?

A detailed comparative chart of difference between various forms of intellectual properties can be found at the end of this page.

Difference in Different Form of Intellectual Property Rights

BASIS OF DIFFERENCE
TRADEMARK
COPYRIGHT
DESIGN
PROVISIONAL PATENT
PATENT

+
Prevailing laws
- The Trademark Act, 1999 deals with registration and prevention of fraudulent use of trademarks.
- The Copyright Act, 1957 provides for the registration and protection of copyright.
- Registration and protection of Industrial Design is administered by the Design Act, 2000 and rules made there under.
- Registration and protection of Patent is governed by the Patent Act, 1970 and rules made there under.
- Registration and protection of Patent is governed by the Patent Act, 1970 and rules made there under.
Trade Marks Act,1999
Copyright Act,1957
Design Act,2000
Patent Act,1970
Patent Act,1970

+
Protection For
- It can include name, symbol, slogans, logo, and or image which identify the business/brand and it makes different from others.
- Protection of original creative works like Music, Books, Articles, drawing, painting,maps,Photographs, Movies, Sculptures, sound recording, choreography, motion pictures,software etc.
- Feature of pattern, configuration, shape, ornaments, composition of lines, or colors applied to any article, packaging and graphic symbols.
- • Novel and original inventions such as machines, processes, manufacture, composition of chemicals and its improvement.
  • Encourage innovation and commercialization of technological advances.
- • Novel and original inventions such as machines, processes, manufacture, composition of matter and its improvement.
  • Patent secures inventions that are useful for the world or to the public at large and has some productive use.
Brands
Creative or intellectual creations
Appearance of products
Inventions & Idea
Inventions & Idea

+
Term of Protection
- Valid for 10 years but can be made perpetual by renewing it in every 10 years.
- Copyright is valid for the lifetime of the author and 60 years after the death of author.
- Validity of Design is 10 years from the date of its registration.
- • Provisional Patent will be valid for 12 months from the date of filing application of Patent.
  • Documents has to file for permanent patent within 12 months otherwise it will ne abandoned.
- Patent is valid for 20 years from the day the application is first made but it can’t be renewed.
10 years + Renewal
Lifetime + 60 Years
10 Years
1 Year
20 Years

+
Exclusive Rights/Rights provided to Owner
- • Use within the applied class.
  • Protect it from anyone using without permission and give right to sell the brand.
- • Copyright owner has authority to transfer the work by licensing, assigning, and other forms of transfers.
  • Right to reproduce the work, to prepare derivative works, to distribute copies, to perform the work publicly, and to display the work publicly. (depending on the type of work).
- It gives authority to Use, make, sell, import, offer for sell the registered design.
- Entitled to protect from copy of the invention or infringement of Patent.
- It gives right to Use, sell, import, make with idea patented.
Brand w.r.t. product / services
Distribute copies & perform work publicly
Authority to Use, sell, import etc.
Protect from copy idea
Authority to Use, sell, import etc.

+
Example
- Parle,Domino’s,Pizzhut,Spykar etc are the brand names.
- Music, pictures, songs, software etc
- packaging and graphic symbols, composition of lines etc.
- New invention in pharmaceutical industry.
- • New invention in pharmaceutical industry.
  • Certain computer programs may fall within the subject matter protected by both patents and copyrights.
Brand' "Nike", logos-the Nike tick
A copyrighted Book
Ornaments
Technology
Technology

+
Symbols Associated
- ™ is used when registration is under process. ® is used when Trademark is registered.
- © is the symbol of copyright.
- There is no symbol to represent Design
- • There is no symbol to represent provisional Patent.
  • It would be able to use 'Patent Pending' on product any time in 12 months
- No symbol is assigned to registered Patent.
™ & ®
©
NA
NA
NA

+
Applcants
- Application for Trademark registration is made by business owners or owners of product.
- Artists, Architect, Choreographers, Creative Professionals and Author.
- One who creates design can apply for its registration.
- Many inventors/businesses wish to patent their inventions even before they are finalised through a provisional patent.
- Inventors and designers who have invented any original invention or invented with improved function can apply for its registration.
Businesses
Artists, Creative Professionals
Designer
Inventor
Inventor

+
Reach
- Separate application has to file for protection in different countries and hence only effective in India
- Protection is available in most of the countries of the world.
- Design protection is obtained by filing an application in each country/region of interest
- It is a territorial right and therefore applicable within the territory of India and the separate patents required to be filed for each country where protection is required.
- It is a territorial right and therefore applicable within the territory of India and the separate patents required to be filed for each country where protection is required.
Territorial right
Most of countries
Territorial right
Territorial right
Territorial right

+
Time Taken
- Trademark Registration usually takes 12-18 months to complete the process.
- It takes nearly 4–8 months to get a copyright if there is no objection in application filed.Otherwise it takes nearly 1–2 years depending on the application type.
- The time taken for design registration is as per the Design Act, 2000 and rules made there under.
- Patent registration takes a 2-3 years for completion of process. But the owner can claim right over a patent from the date of applying provisional patent.
- Patent registration takes a 2-3 years for completion of process. But the owner can claim right over a patent from the date of applying provisional patent.
12-18 months
4-8 months
Prescribed
2-3 years
2-3 years

+
Governing Body
- Intellectual Property in India is governed by the Controller General of Patents, Designs & Trade Marks (CGPDTM).
- All the things related to registration of Copyright are done by Copyright Office, Government of India.
- Intellectual Property in India is governed by the Controller General of Patents, Designs & Trade Marks (CGPDTM).
- Intellectual Property in India is governed by the Controller General of Patents, Designs & Trade Marks (CGPDTM).
- Intellectual Property in India is governed by the Controller General of Patents, Designs & Trade Marks (CGPDTM).
CGPDTM
Copyright Office
CGPDTM
CGPDTM
CGPDTM