Missed your trademark renewal? How to renew late or restore the mark
Trademark registration expired without renewal? The law gives a six-month late-renewal window and a restoration window up to one year. Here is the clock and the steps.
CA Harun Raaj
makeitlegit.in
You built the brand. You registered the mark. Then the ten years ran out and nobody noticed. Maybe the reminder went to an old address. Maybe the agent who filed it is gone.
Now the expiry date has passed and no renewal was filed. Is the mark gone?
Not yet, in most cases. The Trade Marks Act 1999 builds in two safety nets: a late-renewal window and a restoration window. This article walks you through both, in order, with the forms and the clock. It is written for founders, not lawyers.
The short version
A trademark registration lasts ten years and can be renewed from time to time (s.25(1), Trade Marks Act 1999). When the ten years end, you have three stages:
- On time. File the renewal before the registration expires. The Registrar renews it for another ten years (s.25(2), Trade Marks Act 1999).
- Up to six months late. File renewal with a surcharge. The Registrar must not remove the mark if you do this within six months of the expiry (proviso to s.25(3), Trade Marks Act 1999).
- After six months, up to one year. The mark may already be removed from the register. You can still apply to have it restored and renewed (s.25(4), Trade Marks Act 1999).
After one year from expiry, these provisions give you no further window. More on that below.
Why the clock starts at "expiry of the last registration"
The law does not count from the date you got your certificate. It counts from "the expiration of the last registration". That means the end of the original ten years, or the end of the last renewal (s.25(2), Trade Marks Act 1999).
Check the register entry for that date. Everything below is measured from it.
Stage 1: Normal renewal
You file a renewal application in Form TM-R, with the fee in the First Schedule. You may file it at any time not more than one year before the registration expires (rule 57(1), Trade Marks Rules 2017).
A renewal filed within time is allowed. The exceptions are a mark that has already been removed or cancelled, or one that cannot be renewed because of the Act, the rules or an order of the court or the Registrar (rule 57(2), Trade Marks Rules 2017).
The Registry is also meant to warn you. Where no renewal application has been received, it sends a notice in Form RG-3 to the address of service, not more than six months before expiry, telling you the date and the conditions for renewal (rule 58(1), Trade Marks Rules 2017). Do not rely on it. It goes to the address on record, and you may never see it if you moved.
Stage 2: Up to six months late, renewal with surcharge
If the date has passed, do not panic. The Registrar may remove a mark from the register when the renewal conditions are not met at expiry. But the Registrar shall not remove it if you apply in the prescribed form and pay the prescribed fee and surcharge within six months from the expiry of the last registration. The mark is then renewed for ten years (proviso to s.25(3), Trade Marks Act 1999).
The rules say the same thing. The Registrar may remove the mark and advertise the removal in the Journal. But the Registrar shall not remove it if a surcharge application is made in Form TM-R within six months of expiry (rule 59, Trade Marks Rules 2017).
What it costs
The Registry fee for each class is set by the First Schedule to the Trade Marks Rules 2017. Government fees are paid by you directly to the Registry. They are not a fee of any adviser.
- Renewal of registration under s.25, per class (entry 3): ₹10,000 for physical filing, ₹9,000 for e-filing.
- Renewal with surcharge under s.25(3), per class (entry 4): ₹5,000 for physical filing, ₹4,500 for e-filing, plus the renewal fee under entry 3.
So a late renewal of one class by e-filing is the ₹9,000 renewal fee plus the ₹4,500 surcharge. That is ₹13,500 in Registry fees (First Schedule, entries 3 and 4, Trade Marks Rules 2017). If your mark covers more than one class, the schedule says the fee is for each class. These are the figures in the First Schedule as notified in 2017. Confirm the current amount with the Registry before you pay.
Stage 3: After six months, up to one year, restoration
Miss the six-month window and the Registrar may remove the mark from the register for non-payment of the renewal fee.
The Act still gives you one more chance. After six months and within one year from the expiry of the last registration, you can apply in the prescribed form with the prescribed fee. If the Registrar is satisfied that it is just to do so, the mark is restored to the register and renewed for ten years from the expiry of the last registration (s.25(4), Trade Marks Act 1999).
Two points matter here.
It is not automatic. The words are "if satisfied that it is just so to do". The Registrar can also restore the mark "either generally or subject to such conditions or limitations" as the Registrar thinks fit (s.25(4), Trade Marks Act 1999). You might get the mark back with a narrower list of goods or services.
Other people's interests count. The Registrar, when considering restoration and renewal, must "have regard to the interest of other affected persons" (rule 60, Trade Marks Rules 2017). If someone else filed for a similar mark while yours was off the register, that is a live concern.
The restoration application is made in Form TM-R, within one year from the expiry of the registration, with the prescribed fee (rule 60, Trade Marks Rules 2017).
What it costs
- Restoration and renewal under s.25(4), per class (entry 5, which the schedule words as "renewal with surcharge/ restoration and renewal" under s.25(3) and 25(4)): ₹10,000 for physical filing, ₹9,000 for e-filing, plus the renewal fee under entry 3.
By e-filing, one class comes to ₹9,000 plus ₹9,000, which is ₹18,000 in Registry fees (First Schedule, entries 3 and 5, Trade Marks Rules 2017).
Waiting costs more. By e-filing, one class is ₹9,000 on time, ₹13,500 inside the six months, and ₹18,000 for restoration.
The deadline clock
Take the expiry date of the last registration as day zero.
| When | What you do | Form | Source |
|---|---|---|---|
| Up to one year before day zero | Renew in the normal way | TM-R | rule 57(1), Trade Marks Rules 2017 |
| Day zero to six months after | Renew with surcharge | TM-R | proviso to s.25(3), Trade Marks Act 1999; rule 59, Trade Marks Rules 2017 |
| After six months, up to one year after | Apply for restoration and renewal | TM-R | s.25(4), Trade Marks Act 1999; rule 60, Trade Marks Rules 2017 |
The statute counts in months and years. Work out the last day carefully from the exact expiry date, and file well before it.
Step by step
- Find the expiry date. Pull the registration certificate and check the register entry for the mark. Note the date of expiry of the last registration, and the class or classes.
- Decide which stage you are in. Use the clock above. Count six months and one year from the expiry date.
- Confirm the address of service is current. Notices go there (rule 58(1), Trade Marks Rules 2017). If it is out of date, fix it so you do not miss the next notice.
- File Form TM-R. The same form is used for renewal, renewal with surcharge, and restoration (First Schedule, Trade Marks Rules 2017).
- Pay the Registry fee, class by class. Use the entries above. Pay the Registry directly; the fee is the applicant's own.
- If restoring, explain why. The Registrar must be satisfied that it is just to restore (s.25(4), Trade Marks Act 1999). Be ready to say plainly why the renewal was missed.
- Watch for the notice and the Journal entry. After renewal or restoration, the Registry sends a notice to the registered proprietor and every registered user, and advertises the renewal or restoration in the Journal (rule 61, Trade Marks Rules 2017).
What happens if the mark is removed and you do nothing
Removal from the register has consequences beyond the paperwork.
For one year after the removal, the removed mark is still treated as being on the register when someone else applies for another mark. That protects you a little. But it falls away if the Registrar or the High Court is satisfied that there was no bona fide trade use of your mark in the two years before removal. It also falls away if no confusion or deception would arise from the new mark (s.26, Trade Marks Act 1999).
The Act also says no one can sue for infringement of an unregistered trade mark (s.27(1), Trade Marks Act 1999). It does preserve the right to bring a passing off action (s.27(2), Trade Marks Act 1999). Whether a particular removed mark is treated as "unregistered" for this purpose depends on your facts. Ask a CA or trademark professional before you assume you are covered.
What not to do
- Do not assume the reminder will arrive. The Registry's notice goes to the address of service, and only up to six months before expiry (rule 58(1), Trade Marks Rules 2017).
- Do not wait out the six months. Each stage costs more than the last, and restoration depends on the Registrar being satisfied.
- Do not assume a late window exists after one year. The provisions end the restoration window at one year from expiry (s.25(4), Trade Marks Act 1999; rule 60, Trade Marks Rules 2017). If you are past that point, get professional advice on your options before you spend anything.
- Do not ignore the other person. If a similar mark has been filed while yours lapsed, restoration is affected by their interests (rule 60, Trade Marks Rules 2017).
What to do now
- Next step: Find the expiry date of the last registration for each mark. Then file Form TM-R in the stage that fits (rule 57(1), rule 59 and rule 60, Trade Marks Rules 2017).
- Deadline: Six months from expiry for renewal with surcharge (proviso to s.25(3), Trade Marks Act 1999). After six months and within one year for restoration (s.25(4), Trade Marks Act 1999).
- Consequence of missing it: The Registrar may remove the mark from the register (s.25(3), Trade Marks Act 1999). After one year, these provisions offer no restoration route.
Have a CA review your facts before you act or file.
FAQs
Q: My mark expired three months ago. Can I still renew it?
Yes, if you apply in Form TM-R with the surcharge within six months of expiry. The Registrar shall not remove the mark if you do (proviso to s.25(3), Trade Marks Act 1999; rule 59, Trade Marks Rules 2017).
Q: My mark expired nine months ago. Is it too late?
Not necessarily. After six months and within one year, you can apply for restoration and renewal. The Registrar restores it only if satisfied that it is just to do so, and may impose conditions (s.25(4), Trade Marks Act 1999; rule 60, Trade Marks Rules 2017).
Q: Do I pay the renewal fee again on top of the surcharge or restoration fee?
Yes. The First Schedule shows the surcharge and the restoration fee as "plus renewal fee applicable under entry 3" (entries 4 and 5, First Schedule, Trade Marks Rules 2017).
Q: Who pays the fee, and to whom?
You do, directly to the Trade Marks Registry. These are government fees, per class, and are not a charge by any adviser.
Q: I never got a renewal notice. Does that change the deadline?
The statute says the Registrar shall send a notice before expiry (s.25(3), Trade Marks Act 1999), and the rules say it goes to the address of service (rule 58(1), Trade Marks Rules 2017). The six-month and one-year periods in the Act and rules run from the expiry of the registration, not from when you saw a notice. Do not wait on a notice.
Q: Will the restored mark have the same scope as before?
Not necessarily. The Registrar may restore it generally or subject to conditions or limitations (s.25(4), Trade Marks Act 1999).
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