Duration of Trademark Registration under Trademarks Act, 1999

The duration of trademark registration is proposed to be increased from 7 to 10 years. This is in keeping with the generally accepted international practice and to reduce the workload of the Trademarks Office. Sub-clauses (2) provides for duration of renewal of trademark registration. Sub-Clause (3) provides for removal and restoration of trademark Registration. Consequent to the provision proposed in sub-clause (1) of clause 25, renewal registration is permissible for successive periods of 10 years, from the date of the original registration or the last renewal.

duration

To facilitate renewal of trademark registration, sub-clause (4) provides for a grace period of six months for a payment of renewal fee after expiry of trademark registration, subject to payment of the prescribed surcharge. Sub-clause (5) provides for restoration of the trademark to the register within one year in case it is not renewed even within the grace period of six months and the mark is removed. In other respects, the provision retains the provisions contained in section 25 of the existing Act.

Duration of Trademark Registration

Comments – The duration of trademark registration, which was 7 years until recently under the 1958 Act, has been increased to 10 years under the present Act. Since the mark is registered as of the date of making of an application (under 23(1), the 10 year period will start from the date of the application. Section 25(1) provides that the registration of a trademark, after commencement of this Act, shall be for a period of 10 years. Accordingly, all trademarks, even if they had been applied for under the 1958 Act, but registered under the present Act, will have a ten year period of trademark registration.

Marks registered under the 1958 Act

Section 159, which has replaced the Trade and Merchandise Marks Act, 1958, makes the suitable provision for this purpose under sub-section(6), and lays down that “the date of expiration of registration of a trademark registered before the commencement of this Act shall be the date immediately after the period of 7 years for which it was registered or renewed”. By this provision, any trademark registered or renewed under the 1958 Act will expire after 7 year period or trademark registration or renewal.

Renewal of trademark registrations

A registered mark may be renewed for successive period of ten years. For this purpose the registered proprietor will have to make an application in the prescribed manner and within the prescribed period, together with the payment of the prescribed renewal fees. Sub-section (2) of section 25 makes it obligatory on the Registrar to renew the trademark registration for a period of 10 years from the date of expiration of the original registration or of the last renewal of trademark registration, as the case may be. The only requirement is that the request for renewal on Form TM 12 should be filed with the Registrar within the prescribed period along with the payment of the stipulated fees.

Registrar’s notice before expiration of registration

As a measure of securing the interest of the registered proprietor in the registered mark, sub-section (3) of section 25 mandates the Registrar to issue a notice on Form O-3, before the expiration of the registration of the mark, to be registered proprietor, duly indicating the date of expiration and the conditions as to payment of fees. The notification may be sent to the registered proprietor, or if the registration is jointly owned, the notice will be sent to each of the joint registered proprietors and each registered user, if any at the designated address. The notice will be sent not less than one month and not more than 2 months before the expiration of the last registration. In other words, the Registrar may wait the registered proprietor’s filing the renewal request on his own. Only if no application on Form TM 12 with the fee has been received, the Registrar sends the notice on Form O-3, as stated above. Section 27 of general clauses Act defines meaning of service by post; as follows: The practice of registry is somewhat liberal if the registered proprietor proves non-receipt of the statutory notice as being the reason for non-payment of renewal fees. Unless the Registrar is satisfied from his own records that such a notice was issued, the mark is allowed to be renewed. The High Court held that the removal of the trademark from the register without issuing the mandatory notice in Form O-3 was illegal. Accordingly the application to seek its restoration and for removal of the registered trademark under section 25(4) cannot be said to be barred by limitation on the ground that it has not been made within the period of one year from the date of expiration of the last registration of the trademark.

Removal of mark from the Register

After the expiration of the time prescribed in the notice, if the requirements are not comply with by the registered proprietor, the Registrar may remove the trademark from the Register. The law is further liberalized under the present enactment, on the basis of the recommendation of the Parliamentary Committee on the Trademarks Bill, by making an explicit provision that the Registrar shall not remove the trademark from the register id an application is made in the prescribed form along with the prescribed fees together with the surcharge, within 6 months from the expiration of the last registration of the mark. In such cases, the Registrar will renew the trademark for a period of 10 years under sub-section (2). Thus, the Registrar will be likely in all cases to delay the actual removal of the mark from the register for at least 6 months from the date of expiry of trademark registration. If no renewal fee has been paid along with the prescribed surcharge within 6 months after the expiration of the last registration, there is no option left for the Registrar except to remove the mark from the register under sub-section(3).

Effect of removal

When a trademark has been removed from the Register, the Registrar is required to advertise the fact in the Trademarks Journal.

Sub-section (4) makes provision for restoration of a mark which has been removed from the Register, on receipt of an application on Form 13, along with the prescribed fees within one year from the expiration of the last registration. In these cases, the law gives some discretion to the Registrar in that he must be satisfied that it is just so to do before restoring the mark and renewing the trademark registration. He is empowered to allow the restoration and renewal of the mark either generally or subject to such conditions or limitations as he thinks fit to impose. In Second Sight Limited versus Novell U.K. Ltd and Novel Inc., while the Chancery Division did not find it necessary to decide whether an applicant for restoration, making as he does an ex-parte application, has an obligation to make full disclosure in order to enable the Registrar to make an informed exercise of his discretion whether to order renewal and if so on what terms, the court observed that the “Registrar’s function is not merely ministerial, but to exercise a judgment on the material before him, the only source of which is likely to be the applicant. The circumstances may justify his imposition as a condition of renewal for example, that no proceedings for infringement are brought in respect of events prior to the date of renewal. But, in the absence of a successful challenge to the Registrar’s decision by way of judicial review, whilst the misconduct of the successful applicant may be relevant in the existence of the misconduct can of itself constitute grounds for challenge to the restoration to the register”.

Renewal and advertisement of renewal and restoration

After the renewal or restoration and the renewal of trademark registration, information by means of a notice to that effect will be sent to the registered proprietor and registered users, if any. Also, the fact will be notified in the Trademarks Journal.

Restoration period for marks removed under the 1958 Act

Under Section 159(2), any notification, order, etc. issued or given under the 1958 Act shall be operative for all purposes of this Act. Therefore, where a trademark was removed from the register for non-payment of renewal fees, under sub-section (4) of Section 25, it can be restored and renewed provided request in the prescribed manner and along with the prescribed fees is received within one year duration from the date of expiration of last registration.

Imposition of extraneous requirements

Section 25(2) governing renewal makes it mandatory for the register to renew the mark subject only to the conditions prescribed therein, namely an application being made by the registered proprietor in the prescribed manner and within the prescribed duration or time period and the payment of the prescribed fee. It would follow therefore that the Registrar has no power to call for other requirements such as supply of representations of the mark, furnishing of evidence of trademark registration or renewal in other countries or furnishing of declaration or evidence concerning use of the mark. The office also is not required to evaluate afresh the registrability of the trademark.

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