• Trademark - How to renew opposed expired trademark

I had regisered a Trademark in May 2007 (application date)
Journal date is september 2008
In november 2008, there was a opposition
Trademark status as of today also shows Opposed
There was no hearing to my knowledge.

When i now try to renew Trademark, Registrar office says i can not renew as Trademark has expired and opposed

What must i do ?
Ans along with relevant rule/section required
Asked 1 year ago in Intellectual Property from Mumbai, Maharashtra

Trademarks don't have a validity of lifetime tenure. Hence, they are to be renewed every after 10 years as regulated by the Trademark Act 1999 of India. As you might be knowing that 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.

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.

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.

Better would be to have a detailed discussion.

SHRI GOPAL VERMA

ADVOCATE ON RECORD

SUPREME COURT OF INDIA

Shri Gopal Verma
Advocate, Delhi
204 Answers
1 Consultation

4.0 on 5.0

Dear Client,

Renewal of an expired trademark is only option left in such cases. In India even if the mark has been expired, one can apply for its re-registration. If someone else applies for registration for expired trademark as per the prescribed procedure, owner of expired trademark can file objections at the registry, tribunal or appropriate forum.

Kindly consult trademark attorney, with necessary documents, for correct and precise advice.

Expert Jurist LLP

Jyotishwar Bhosale
Advocate, Navi Mumbai
15 Answers
1 Consultation

5.0 on 5.0

1) Yes. The Trademark Registry checks for relative grounds of refusal during the examination stage and cites earlier registrations and applications.

2) Pursuant to the issuance of the examination report, the applicant must file an appropriate reply along with the required documents to overcome the objections raised against a trademark by the registry.

The Trademark Rules 2017 provide for a 30-day period from the date of receipt of the examination report to file a reply to the office action or request a hearing. In the absence of such response, the application will be deemed to have abandoned on the grounds of non-prosecution.

The applicant can also limit the application in respect of goods or geographical region, or can accept conditions as directed by the examiner.

3) If a mark is refused, Section 91 of the Trademarks Act states that an appeal must be filed with the Intellectual Property Appellate Board within three months of the order of refusal.

4) Registration

Once registered, the registration of a mark is backdated to the date on which the application was filed. However, for the purpose of non-use cancellation, the trademark registration date is the date when it was entered into the Trademarks Register under Section 47 (b) of the Trademarks Act.

5) In India, the term of protection for a trademark is 10 years from the date of application, renewable every 10 years on payment of the requisite fee.

Ganesh Kadam
Advocate, Pune
7453 Answers
65 Consultations

4.9 on 5.0

Hello,

You will have to apply for a fresh trade mark.

Since the TM was opposed in the year 2008 therefore no trade mark was allotted to you. You are saying that as of today also the status is opposed that clearly means that the TM was never granted to you.

it is advised that you withdraw the last application and file a fresh application and obtain the TM.

Regards

Anilesh Tewari
Advocate, New Delhi
16907 Answers
259 Consultations

5.0 on 5.0

You need to file for a fresh trade mark as the previous one was under objections which might have been dismissed due to non prosecution. If you had a registered trade mark and it got expired after a period of 10 years then you have to apply for renewal of trademark under section 25 of the trade mark act

Ruchit Dugar
Advocate, New Delhi
190 Answers

4.9 on 5.0

Dear,

As you mentioned your trademark is expired and you are not able to renew it again,

because it has opposed.

Then ask registrar that show you the journal,where he advertise the fact forthwith in journal.

Because it's registrar duty to advertise it before remove.

and registrar shall not remove the trademark from the register if an application of payment of surcharge

is made under proviso to sub section (3) of section 25 in form TM-R within six months from the expiration

of the registration of the trademark.

Tarun Agarwal
Advocate, Jaipur
769 Answers
3 Consultations

4.9 on 5.0

Dear Client,

You are open to apply for renew of trade mark within six month of expiration of trade mark, Sec 25 of the act.

Also, such objections cannot be stay without any disposal,

Registrar have to decide whether to reject or allow objection but cannot be stay pending.

You should file appeal to appellant board u/s 91.

Yogendra Singh Rajawat
Advocate, Jaipur
13088 Answers
15 Consultations

4.6 on 5.0

This is my response to you:

1. When you apply for registration under section 23 of the Trade Marks Act, 1999, the registration will be approved after meeting certain conditions. When the trademark is opposed by the 3rd party who’s mark has been damaged then a hearing will be called and both the parties have to appear before the court. Also see Rule 33 of the Trade mark rules, 2017 and also Rule 42;

2. The objection can be removed by evidence. Based on the decision of the court, the mark will be decided if rejected or accepted. This is procedure according to section 98 of the Act;

3. Therefore your trademark was rejected and a communication might have been made to you;

4. Trademark can be registered for the duration of 10 years. It can be renewed for a further period of 10 years on payment of the renewal fees also see Rule 57 of the Rules of 2017;

5. Reference to the Act: http://www.ipindia.nic.in/writereaddata/Portal/IPOAct/1_43_1_trade-marks-act.pdf;

6. Reference to the Rules: http://www.ipindia.nic.in/writereaddata/Portal/IPORule/1_69_1_312_1_TRADE_MARKS_RULES_2017__English.pdf

Gowaal Padavi
Advocate, Mumbai
1819 Answers
2 Consultations

5.0 on 5.0

Possible to answer after looking at entire file.

Jugal Kishore Agrawal
Advocate, Jaipur
81 Answers

Not rated

A trademark right expires 10 years from day on which the trademark was registered. You can renew your trademark right by filing a request for renewal six months before the trademark right expires. You need to pay the renewal fee at the same time you request to renew your trademark right.

As per section 33(4) of TM act, is the applicant fails to respond to the communication sent by the registrar for the objections raised within one month, then the registrar may abandon the application for registration of trademark. Thus under the circumstances you may hav to apply afresh for registration of your trademark.

You may consult a consultant/agent on further issues.

T Kalaiselvan
Advocate, Vellore
56549 Answers
695 Consultations

5.0 on 5.0

Ask a Lawyer

Get legal answers from top-rated lawyers in 1 hour. It's quick, easy, and anonymous!
  Ask a lawyer