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Prescribed manner in which application can be filed
For seeking a renewal of trademark, the applicant has to file form TM-12 properly signed and sealed by the authorized representative of the applicant. The renewal application can be made by the registered proprietor only and not by licensee of the registered proprietor, in other words if there has been any change in the proprietor (owner of trademark) on account of death, assignment etc. then in that case the new proprietor must be updated in the register of trademark, however if it has not been done then in that case and the renewal application must also be accompanied with a joint request by registered proprietor and transferee to register the transferee as subsequent proprietor of trademarks upon the same devolution of title in Form No. TM-23 or/and a request to register a subsequent proprietor of a trademark upon devolution of title in Form No. TM-24.
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Registrar’s notice before expiration of registration
The Registrar must notify the registered proprietor, or in the case of a jointly registered trademark each of the joint registered proprietors, and each registered user, if any, in writing on Form O-3 of the approaching expiration, at the address of their respective principal place of business in India as entered in the Register, or where the registered proprietor or registered user has no principal place of business in India, at his address for service as entered in the Register. The notice must be sent at a date not less than one month and not more than two months before the expiration of the last registration of a trademark. No notice is, however, required to be sent if an application on Form TM-12 for renewal of the registration together with the prescribed fee has been received by the Registrar within that time (Rule 64).
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Prescribed period within which the application can be filed
The renewal application to renew a trademark registration can be filed within 6 months prior to the date of its expiration and within a period of 6 months after expiration of the trademark. As stated earlier the application must be filed in TM-12 by the proprietor. However, in case the trademark could not be renewed within the above prescribed time limits then the registrar shall remove the trademark from its register and thereafter the only remedy available to the proprietor of Trademark to file an application for restoration and renewal of trademark.
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Removal of the trademark from the register for non-payment of renewal fees
The trademark can be renewed within prescribed period and manner only, however, if the proprietor of trademark fails in getting the renewal then after serving a notice of expiration the registrar will remove the trademark from its register. Which will remain open for restoration for a limited period of time, after that the trademark shall be categorised as non-register trademark
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Restoration and renewal of trademark
Where a trademark has been removed from the register for failure to pay the renewal fee, the registrar may on receipt of an application in Form TM-13 accompanied with prescribed fee (Rs.5000/- as of now). After 6 months and within 1 year from the expiration of the last registration of trademark. The power to restore a removed application is a discretionary power vested with the registrar of company, wherein he shall be exercising his judgment on the material before him.
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Effect of non-renewal of the registration
If a trademark is not renewed or restored by filing appropriate application and applicable fees, the registrar is duty bound to de-register the trademark from its register. The only option left before the proprietor shall be to seek fresh registration by filing a new application. The new application shall be processed without considering anything of the past.
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Prescribed renewal fees
Following of the government filing fees with respect to the forms which may be used for renewal/restoration of the trademark on case to case basis.
Sl. No Name of Form Purpose Prescribed fees 1. TM-12 Application for renewal of trademark within 6 months prior to and 6 months after the expiry date of current registration. Rs.5000/- 2. TM-13 Application for restoration of trademark after 6 months and within one year from the expiration of the last registration. Rs.5000/- 3. TM-23 Application for filing a Joint request by registered proprietor and transferee to register the transferee as subsequent proprietor of trademarks upon the same devolution of title. (a) Rs.5000/- if application filed within 6 months of acquisition of TM.
(b) Rs.7500/- if application filed after expiry of 6 months, but before 12 months of acquisition of TM.
(c) Rs.10,000/- if application filed after 12 months from the date of acquisition of TM.
4. TM-24 Application for filing a request to register a subsequent proprietor of a trademark upon devolution of title. (a) Rs.5000/- if application filed within 6 months of acquisition of TM.
(b) Rs.7500/- if application filed after expiry of 6 months, but before 12 months of acquisition of TM.
(c) Rs.10,000/- if application filed after 12 months from the date of acquisition of TM.
Shalimar Bagh, Delhi
