Trademark Law in India is passing through a remarkable and progressive phase. Trademark registrations in India have increased over the last decade or so as India is becoming one the preferred destination for commercial activities. Trademark registration in India is regulated by the Trademark Act of 1999. A registered trademark is valid for 10 years after the expiry of which it needs to be renewed. Before the expiry of these 10 years, the registered trademark owner has to pay the renewal fees in order to continue the trademark for another 10 years.
However there may be times where the trademark holder fails to renew the trademark on time. In such a situation the only option left with the trademark owner is to apply for the restoration of the expired trademark because when the trademark owner fails to pay the renewal fees before the expiry of 10 years then the mark becomes liable to be removed from the registry of trademark.
At a date not less than one month but not more than three months before the expiration of the last registration of the trademark, if the Registrar does not receive any application from the proprietor or his authorized agent for renewal of the trademark, the Registrar may notify the proprietor or his agent the approaching expiration of the mark.
If the prescribed renewal fee is not paid by the proprietor or his authorized agent before the expiration of the last registration of the trademark, then the Registrar may remove the mark from the register and advertise so in the official journal. However the Registrar shall not remove the mark from the register if an application is made for payment of the renewal fee within six months after the expiration of the last registration of the trademark under Section 25(3) of the Trademark Act, 1999.
If no application is filed within six months after the expiration of the last registration of the trademark, then the trademark expires.
An application for restoration of the expired trademark can filed to the Registrar within one year from the expiration of the last registration of the trademark under Section 25(4) of the Trademark Act, 1999 accompanied by the prescribed fee. The Registrar shall while considering the request for restoration of the expired trademark look at the interest of other affected persons.
Upon the restoration of the expired trademark, a notice must be sent by the Registrar to proprietor regarding such restoration and the same must be advertised in the official Journal.
After the advertisement is made in the Trademark Journal regarding the restoration of the expired trademark, the Registrar invites for objection against restoration. If no such objection is made then the trademark is restored in the register for the next 10 years. In case of any objection, the Registrar conducts hearing and after hearing both the parties it passes a decision on whether to restore the trademark or not.
If somebody else applies for registration of the expired trademark, then the proprietor has to file an objection against the third party who has applied for registration of the expired trademark.
Restoration of an expired trademark protects the proprietor from duplicity and enables to maintain the exclusivity of the brand. If the expired trademark is not restored then the brand opens up in the market and can be exploited by anyone. Thus, in order to protect the rights of the proprietor that are attached with the trademark, it is necessary to restore the trademark.
In the recently decided matter of Union of India & Ors. v/s Malhotra Book Depot1 by the Delhi High Court on the restoration of the trademark of Malhotra Book Depot after 26 years of its expiry, it was directed by the Hon’ble Court that the Mark of the respondent must be renewed.
Thus, it can be said that the Trademark Act, 1999 and Trademark Rules of 2002 (further amended in 2013) provides the liberty to the proprietor of the trademark that even if the trademark has expired he can file an application for restoration of the expired trademark at any point of time only if the Registrar has not issued a notice to the proprietor in FORM O3.