A Guide To Trademark Restoration: Reclaiming Brand’s Identity

Introduction

Trademark restoration is a significant legal process that enables trademark owners to revive their expired trademarks and reinstate them on the register of trademarks. Trademarks hold immense value for businesses, serving as distinctive symbols that set them apart from competitors and enhance brand recognition. While the initial validity period of a registered trademark is typically ten years, timely renewals are essential to maintain continuous protection. However, due to various reasons, trademark owners may miss the renewal deadline, leading to the removal of their trademarks from the register. The restoration process offers a valuable opportunity for trademark proprietors to reclaim and safeguard their valuable intellectual property assets, ensuring extended protection and exclusive rights to their brands

This opportunity for restoration is not easily granted, as reasons for removal undergo rigorous scrutiny, and restoration is typically difficult to obtain. However, the Trademarks Act provides provisions to enable businesses to restore their mark under certain circumstances, particularly in cases of non-renewal of the original or previous registered trademark. Trademark restoration is governed by Section 25(4) of the Trademark Act 1999[1] and the specific procedure for restoration is detailed under Rules 57-61 of the Trademark Rules 2017.[2]

Documents required for Trademark Restoration

• Identity proof & address proof of the applicant: These documents are necessary for identification and communication purposes. Acceptable identity proofs may include Aadhaar card, passport, driver’s license, etc., and address proofs may include utility bills, rent agreements, etc.
• Copy of the application form (Form TM-A): This is a copy of the original application form that was used for the trademark filing.[3]
• Copy of Registered Trademark Certificate: A copy of the original trademark certificate is essential to provide evidence of the registered trademark.
• Power of Attorney (if applicable): If the restoration application is being filed by an authorized representative or agent on behalf of the trademark owner, a Power of Attorney document granting them the authority to act on behalf of the owner is necessary.
• Statement explaining reasons for non-renewal: A statement should be included, explaining the reasons or grounds for failing to renew the trademark within the specified time. This statement provides clarity to the authorities on the factors that led to the non-renewal of the trademark.

Procedure for Trademark Restoration

Step 1: Filing of Trademark Application

The process of restoring a lapsed or expired trademark begins with the owner of the trademark or their authorized agent filing the application form TM-R.[4] Along with the application, the relevant documents as mentioned earlier, such as a copy of the registered trademark certificate, identity proof, address proof, and a power of attorney (if applicable), must be submitted. The prescribed fees for restoration and renewal should also be paid at this stage.

Step 2: Check the Application Status

After filing the restoration application, it is crucial for the trademark owner or their agent to regularly check the status of the application with the Trademark Registry. This is necessary as there are various time-bound actions required from the applicant during the application process. Keeping track of the status ensures that the restoration process proceeds smoothly, and the applicant can promptly respond to any queries or requirements from the trademark registry.

Step 3: Advertisement in the Trademark Journal

During the restoration process, the Trademark Registrar carefully considers the interests of other affected individuals or parties. Once the examination process is completed, and the restoration application is accepted, the trademark will be advertised in the Trademark Journal, which serves as an Official Gazette.

Analysis of Section 25(3) with relevant case laws

Under Section 25(3) of the Trademarks Act of 1999,[5] the Registrar is required to send a notice to the registered proprietor of a trademark before the expiration of the last registered trademark. This notice informs about the date of expiration and the conditions for renewal, including the payment of fees. If one fails to comply with these conditions within the prescribed time, the Registrar has the authority to remove the trademark from the register.[6]

However, Section 25(4) provides another provision to safeguard the trademark. If one applies for the restoration of the expired trademark within one year from the expiration of the last registered trademark, along with the prescribed fee, the mark can be processed for restoration. During this process, the Registrar takes into consideration the interests of other affected persons.[7]

Upon successful restoration of the expired trademark, the Registrar sends a notice informing about the restoration, and the same is advertised in the Official Journal. This advertisement invites any objections related to the action taken. If objections are raised, the Registrar will conduct a hearing to address them. If no objections are raised, the trademark is restored for another 10 years in the name of the proprietor.

If the notice under Section 25(3) is not served by the registrar, it enables the right to appeal to the High Court through a writ petition. The writ petition challenges the due procedure of law and requires the proprietor to establish evidence of not receiving the notice. If the applicant can establish this, the registrar has to rebut the contentions. However, the initial onus lies on the applicant/proprietor.

In the case of Union of India v Malhotra Book Depot,[8] the respondent did not receive any Notice, and despite the non-issuance, the Registry removed the mark from the Register. The court held that a mark cannot be removed without following due process as per the provisions of the law and that the removal was done without following due process, making it illegal.

Duration for Trademark Restoration

There are two cases for the application of trademark restoration. The first case involves the restoration of a trademark within six months from the date of expiration of the last registered trademark, with a surcharge fee payable.[9] The second case is for restoration of a trademark, which has been removed from the register of trademarks, after six months to one year from the date of expiration of its last registered trademark, wherein both restoration and renewal fees are applicable.[10]

Consequences of Failing to Restore Trademark

The consequences of failing to restore a trademark are indeed unfavourable for the trademark owner. If the owner fails to file an application for trademark restoration within the specified time or neglects to pay the required fees, the trademark registrar will remove the trademark from the trademark register.[11]

Once the trademark is removed from the register, the owner loses all associated rights and protections linked to the trademark. This includes the right to file for infringement, which means the owner can no longer take legal action against others who may use a similar or identical mark for their goods or services. Moreover, the owner loses the ability to protect their brand from competing businesses that might use similar marks, potentially leading to confusion among consumers.

Conclusion:

Restoring an expired trademark is crucial to safeguard it from deception and maintain its exclusivity. Without restoration, the brand becomes vulnerable to exploitation by anyone. The Trademark Act provides provisions for enabling this restoration action, allowing owners to apply for restoration within a specified timeframe after the renewal period lapses.

Upon successful restoration, the Registrar renews the registered trademark for an additional period of 10 years from the date of expiration of the last registered trademark. This ensures prolonged protection and security for the trademark, akin to the renewal process. However, it is essential for the registrar to consider the interests of all affected parties during the restoration process. By taking these steps, businesses can uphold their trademark rights effectively and safeguard their brand’s integrity.

FAQs:

[1] The Trade Marks Act, [Act No. 47 of 1999], Section 25(4)

[2] Trademark Rules 2017, (https://www.ipindia.gov.in/TM-Rules-2017.htm)

[3] https://ipindia.gov.in/writereaddata/Portal/Images/pdf/FORM-TM-A.pdf

[4] Trademark Rules 2017, Rule 60

[5] The Trade Marks Act, [Act No. 47 of 1999], Section 25(3)

[6] ibid

[7] The Trade Marks Act, [Act No. 47 of 1999], Section 25(4)

[8] 2013 (54) PTC 165 (Del) (DB)

[9] Trade Marks Rules 2017, Proviso to Rule 59 (Form TM-R)

[10] Trade Marks Rules 2017, Rule 60 (Form TM-R)

[11] Trade Marks Rules 2017, Rule 59

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