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Things to Know about Trademark Restoration

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Last Updated on June 18, 2024 by Sachin Jaiswal

The legal process known as trademark restoration allows the owner of a trademark that has ended or been abandoned to regain their rights and restart exclusive use of the mark. It gives trademark owners who have unknowingly let their trademarks end another shot at regaining this important intellectual property asset.

Businesses need trademark restoration because it helps to protect exclusive market rights, stop illegal use, and maintain brand identity. By restoring a lapsed trademark, companies may maintain their image, build trust, and continue to gain from the legal defences and income possibilities that a registered trademark offers.

Understanding Restoration of Trademarks

An expired or abandoned trademark owner can recover their rights and use the mark exclusively again through a formal process known as trademark restoration. This gives a second shot at making up for mistakes made accidentally and recovering a brand’s important asset.

Situations under which restoration is applicable:

When a trademark owner forgetfully lets their trademark expire or become abandoned because they don’t renew it within the allowed time, trademark restoration becomes important. Section 25(4) of the Trademarks Act, 1999, controls the restoration process; the Trademark Rules 57–61 provide specific directions for the restoration process.

Eligibility and Legal Framework

In India, qualifications and the legal structure for trademark restoration:

Eligibility Requirements

  • The trademark had to have been removed from the record for non-payment of fees or non-renewal.
  • The last register end date must be six months or one year ago before the restoration application may be made.
  • The candidate has to pay the necessary costs and have a good reason for not renewing.

Statutory Requirements Controlling Restoration

  • Section 25(4) of the Trademarks Act, 1999 allows trademarks that were removed from the record for non-renewal to be restored.
  • The Trademark Rules, 2017’s Rule 60, describes the restoration process and stresses the registrar’s duty to weigh the interests of the parties affected.
  • Restoration applications are made on Form TM-R. The applications must include a statement explaining the reasons for non-renewal, together with the needed price.

Common Reasons for Trademark Restoration

The most common reasons for seeking restoration of rights include:

  • Failure to Review on Time: The main cause of trademark restoration is not updating the trademark registration in the given term. Trademark registrations must be updated every ten years; if the owner neglects to do so, the trademark may be taken off the register.
  • Removal due to Error or Omission: Trademarks can also be taken off the register as a result of administrative mistakes or the trademark owner’s unintentional absences, including filing renewal papers wrongly or not answering official letters.
  • Claiming Remedies for Infringement: The owner may need to restore a trademark in order to file a case against infringement and seek damages because a removed trademark forfeits its legal rights.
  • Handling Administrative Errors: Sometimes, the trademark office makes clerical mistakes or overlooks, resulting in trademarks being taken from the register. Restored trademark rights allow owners to fix these routine mistakes.

For whatever reason, trademark restoration gives owners another chance to regain control of their precious intellectual property rights and enjoy the benefits of registered trademarks, such as market exclusivity and legal defences.

Trademark Restoration: Required Documents

Important papers needed to restore a trademark in India include:

  • Confirmation of the Applicant’s Address: The applicant’s home or business location must be verified by legal address convincing proof such as a power bill, bank account, or government-issued ID.
  • Registration Photo ID: The applicant’s identity must be proven by a government-issued photo identification paper, such as a passport, Aadhaar identification card, or driving licence.
  • The Photocopy of the Trademark Registration Application: Background information and details of the registered trademark must be demonstrated through a duplicate of the original trademark registration application.
  • The applicant’s Permanent Account Number (PAN) card is needed as paperwork for the restoration process.
  • The Trademark Registration Certificate: The applicant must submit the original trademark registration certificate to prove the mark’s earlier registration.
  • Power of Attorney: If an accepted person or agent is making the repair application, a legal power of attorney must be given.
  • Declaration of Causes or Justifications for Non-Renewal: The application must provide a full statement explaining the causes—such as accidental oversight, process mistakes, or other mitigating circumstances—for not renewing the name within the given term.

Giving the register these important papers helps assess the case and educate the decision-making process by proving the applicant’s ownership, name, and reason for the trademark restoration.

Process for Trademarks Restoration

In India, the key processes in trademark restoration are:

  • Submission of TM-R Application: The trademark restoration application form must be completed by the brand owner or their approved agent. The last registration of the trademark must end within six months to a year, at which time this application must be made.
  • Statement of Non-Renewal Reasons: A candidate must provide a thorough statement describing the reasons—such as accidental oversight, managerial mistakes, or other mitigating circumstances—for not extending the name within the allowed term.
  • Application Timeline: The trademark’s last registration ends six months to a year after the restoration application is made. Applications submitted after this date will not be taken into consideration.
  • Application progress Monitoring: Because the registry must finish a number of time-sensitive tasks and checks, the candidate must regularly watch the progress of the restoration application.
  • Registry Checks and Inspections: The application will be confirmed, and the interests of affected parties will be evaluated, among other checks and inspections carried out by the trademark register.
  • Publication in Trademark Journal: Should the repair application be accepted, the trademark will be published in the Trademark Journal, giving third parties the chance to object during the given opposition time.
  • Third-Party Opposition Period: After the publication, any third party has three months following release to object to the trademark being restored.
  • Registrar’s Decision and Restoration Order: If no valid objection is filed, the registrar will issue a restoration order, reinstating the name to the register for ten more years.

Deadlines and Timelines

Indian Trademark Restoration Timelines and Deadlines

Important Dates to Remember

  • File the trademark renewal application six months before the registration ends.
  • File the brand restoration application and the late renewal costs six months after the renewal date has passed.
  • Apply for trademark restoration a year after the expiration of the last trademark registration.

Consequences of Missing Deadlines

  • Failure to update the mark: If the mark is not renewed, it will be deleted from the register.
  • Failure to restore the mark: When the mark is not restored, the owner forfeits the legal rights linked to the mark.

Trademark Restoration Refusal Grounds in India

A brand may not be restored by the trademark registrar for the following reasons:

  • Absence of Use of the Mark: The registrar may reject restoration, saying that the mark has been abandoned if they find that the trademark owner has not used the mark for a long period of time.
  • Lack of Renewal payments: One of the main reasons trademark restoration is denied is that the necessary renewal payments are not paid within the given time. For the application to be qualified for restoration, all due fees, including any late penalties, must be paid.
  • Public Interest: Should the registrar decide that restoring the name would be against the public interest—for example, if it has become common or is likely to confuse consumers—they may decline restoration.
  • Trademarks in Dispute: If there are any disputes or conflicting trademark claims, the registrar may reject the revival of a trademark until ownership and rights issues are solved.
  • Similarity to Existing Marks: The registrar will also reject reinstatement if it is found that the brand is confusingly similar to a currently registered mark, which might trick consumers.

The registrar’s hard balance of the applicant’s rights and the larger public interest assures that restored trademarks will not violate others’ rights or confuse customers.

In Summary

Businesses must restore their trademarks so they may regain their important intellectual property rights and protect their brand identity, image, and market monopoly. Following the timelines, giving a good reason for not renewing, turning in all necessary paperwork, and making sure the restored trademark does not break any already-existing marks or the public interest are all important factors during restoration. Businesses may successfully defend their trademark rights and keep the purity of their brand by sticking to the Trademark Act of 1999 standards, which ensures long-term safety and security for their intellectual property assets.

Sachin Jaiswal

Sachin Jaiswal B.A.(Hons)! Sachin Jaiswal has been writing material on his own for more than five years. He got his B.A.(Hons) in English from the well-known University of Delhi. His success in this job is due to the fact that he loves writing and making material that is interesting. He has worked with a lot of different clients in many different fields, always giving them high-quality content that their target audience will enjoy. Through his education and work experience, he is able to produce high-quality content that meets his clients' needs.