Section 25 of Trademark Act, 1999 provides the rules for how long a trademark remains valid and how to keep it active. It states that a trademark is registered for ten years and must be renewed to stay protected. Owners can renew by filing Form TM-R and paying a fee before the expiry date, with a six-month grace period if they miss it. If not renewed, the trademark may be removed, but it can be restored within a year under certain conditions. This section ensures trademarks are actively managed, protecting brand rights and keeping the registry up to date.
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What is Section 25 of the Trademark Act?
Section 25 is titled as "Duration, renewal, removal and restoration of registration" which explains how long a trademark stays registered and what owners must do to keep it active. It’s divided into four parts, each covering a different aspect of a trademark’s life after registration. This section ensures trademarks don’t stay on the registry forever without the owner taking action.
Section 25 says a trademark is valid for a set time and must be renewed to stay enforceable. If the owner does not renew, the trademark can be removed but there is a chance to restore it under certain conditions. This encourages the owners to actively use and manage their trademarks which shows that they are still relevant in business.
Lawyers need to understand Section 25 to advise clients on renewing trademarks on time. This prevents gaps that could let others copy the brand or cause the owner to lose exclusive rights.
The section also connects to other parts of the Act, like Section 9 (reasons to deny a trademark) and Section 47 (removal for not using the trademark), creating a complete system for managing trademarks.
Duration of Trademark Registration
Section 25 says a trademark registration lasts for ten years from the date it’s registered. Sub-section (1) says that the registration of a trademark, after the commencement of this Act, shall be for a period of ten years, but may be renewed from time to time in accordance with the provisions of this section.
This ten-year period applies to all trademarks registered after the Act started on September 15, 2003. Older trademarks from the 1958 Act were updated to follow this rule.
The ten-year limit allows the Trademark Registry to check and update the list of trademarks, ensuring only active ones stay registered.
Once a trademark is registered, the owner gets exclusive rights for ten years. As the end of that period nears, the owner must take action to keep the trademark active.
Lawyers help clients by calculating the exact expiry date, which starts from the registration date, not when the application was filed. This rule in Section 25 highlights the need to track deadlines carefully in managing intellectual property.
Check out the Trademark Class 25 that covers the clothes and accessories.
Renewal of Trademark Registration
Renewal lets owners extend their trademark’s protection beyond the first ten years. Sub-section (2) explains: "Subject to the provisions of this section, the Registrar of Trademarks shall, on application made by the registered proprietor of a trademark in the prescribed manner and within the prescribed period and subject to payment of the prescribed fee, renew the registration of the trademark for a period of ten years from the date of expiration of the original registration or of the last renewal of registration."
To renew, the owner files Form TM-R with the required fee, which depends on whether it’s filed online or in person. The application should be submitted six months before the trademark expires, but it can be filed up to the expiry date.
Each renewal adds another ten years of protection, and this can go on indefinitely if the owner keeps renewing.
Section 25 also offers a six-month grace period after the expiry date, as mentioned in sub-section (3), where owners can renew by paying an extra fee. This helps owners who miss the deadline by mistake.
Lawyers often suggest setting up reminders to ensure clients renew on time, as delays could lead to challenges from others trying to use the trademark.
Procedure for Renewal
The renewal process under Section 25 is simple but must follow the rules in the Trade Marks Rules, 2017. The owner or their agent submits the application to the Trademark Registry. Here are the main steps:
Filing the Application: Submit Form TM-R with details like the trademark, registration number, and owner’s information.
Paying Fees: Pay the official fee, with an extra charge if filed late during the six-month grace period.
Registrar’s Notice: The Registrar sends a notice before the trademark expires, reminding the owner of the deadline and renewal steps.
Verification and Certificate: If everything is correct, the Registrar issues a renewal certificate.
If the renewal isn’t completed properly, the trademark may be listed as expired, which could lead to its removal. Lawyers should note that while the Registrar’s notice is required (as confirmed by courts like the Delhi High Court), owners must still be proactive and not depend only on the notice.
Removal of Trademark from the Register
Section 25 allows the Registrar to remove a trademark if the owner doesn’t renew it on time. Sub-section (3) says: "If at the expiration of the time prescribed in that behalf those conditions have not been duly complied with, the Registrar may remove the trademark from the register."
The Registrar must send a notice before removing the trademark, ensuring the process is fair. If the trademark is removed, it loses its registered status, making it open for others to use. Lawyers should know that even an unregistered trademark might still have some rights under Section 27, but it loses benefits like automatic proof of validity. This shows how Section 25 works with other parts of the Act to keep the registry accurate.
Read about What is a Trade Secret?
Restoration of Removed Trademark
Section 25 offers a way to restore a removed trademark under sub-section (4): "Where a trademark has been removed from the register for non-payment of the prescribed fee, the Registrar shall, after six months and within one year from the expiration of the last registration of the trademark, on receipt of an application in the prescribed form and on payment of the prescribed fee, if satisfied that it is just so to do, restore the trademark to the register."
Restoration isn’t automatic i.e. the owner must apply using Form TM-R, pay a higher fee, and explain why the trademark should be restored, like if they missed the deadline by mistake. If approved, the trademark is restored as if it never expired. This option is only available between six months and one year after the expiry date, so owners must act quickly.
Restoration can face challenges if someone else started using the trademark after it was removed. Court cases have shown that if the Registry makes procedural errors, like not sending a notice, it can help the owner’s case for restoration.
Summary
Section 25 of the Trademark Act, 1999 is a well-designed rule that protects trademark rights through clear steps for duration, renewal, removal, and restoration. It ensures the trademark registry stays active and relevant by requiring owners to renew their marks and offering ways to restore them if removed. For legal professionals, understanding this section is essential to help clients avoid mistakes that could weaken their brand’s protection. As India’s intellectual property system grows, following Section 25 is key to maintaining strong trademark portfolios.
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Section 25 of Trademark Act: FAQs
Q1. What is a Class 25 trademark?
A Class 25 trademark covers clothing, footwear and headgear under the Nice Classification system.
Q2. What is Section 25 of the Geographical Indications Act?
Section 25 of the Geographical Indications Act, 1999, prohibits registering a geographical indication as a trademark if it causes confusion.
Q3. What is the time limit for trademark objection?
You must respond to a trademark objection within two months from receiving the examination report.
Q4. What are the 4 types of trademarks?
The four types are word marks, logos, slogans, and device marks (designs or symbols).
Q5. What happens if a trademark is objected?
If a trademark is objected, you must address the issues raised, or the application may be rejected.
