Understanding Trademark Abandonment in India
A trademark is considered abandoned in India when:
- Non-Renewal After Expiry – Trademarks must be renewed every 10 years. Failure to file for renewal within the stipulated time (including the 6-month grace period) leads to removal from the register.
- Non-Response to Examination Report – If the applicant does not respond to an objection or opposition within the prescribed time (usually 30 days to 1 month), the application may be abandoned.
- Non-Filing of Form TM-12 (Affidavit of Use) – If the trademark is not used for over five years, it becomes vulnerable to cancellation unless the owner proves genuine use.
- Failure to Submit Required Documents – Missing deadlines for submitting evidence or affidavits can result in abandonment.
Legal Framework for Revival of Abandoned Trademarks
The Trade Marks Act, 1999, and the Trade Marks Rules, 2017, govern trademark revival in India. Key provisions include:
- Section 25(4) of the Trade Marks Act – Allows restoration of a removed trademark within one year from the date of expiration, provided valid reasons are given.
- Rule 58 of the Trade Marks Rules, 2017 – Specifies the procedure for filing a restoration application (Form TM-13) along with the renewal fee and a surcharge.
- Rule 37 – Pertains to revival of abandoned applications if the delay was unintentional.
Step-by-Step Process to Revive an Abandoned Trademark
- Check Trademark Status
- Visit the IP India website (https://ipindia.gov.in/) and use the Trademark Public Search tool to confirm the status (abandoned, expired, or removed).
- Obtain the examination report (if abandonment was due to non-response).
- File for Restoration (If Trademark Expired)
- Within 1 year of expiry, submit:
- Form TM-13 (Application for Restoration)
- Form TM-12 (Renewal Application)
- Restoration fee (₹5,000 + renewal fee + late charges) .
- A sworn affidavit explaining the reason for delay (e.g., administrative error, genuine oversight).
- Revive an Abandoned Application (If Not Yet Registered)
- If the application was abandoned due to non-response, file:
- A request for revival with the Trademark Registry.
- A revised response to the examination report.
- Additional fees (if applicable).
- Submit Proof of Use (If required)
- If the trademark was removed for non-use, provide:
- Sales invoices
- Advertising material
- Affidavits from customers/distributors proving continuous use.
- Await Hearing (If opposed)
- If the Registrar raises objections, a hearing may be scheduled.
- Present legal arguments and evidence supporting revival.
- Re-Registration (If Revival Fails)
- If the trademark cannot be revived, reapply under a fresh application (though these risks losing priority).
Challenges in Trademark Revival
- Strict 1-Year Deadline – Restoration is only possible within 12 months of expiry; beyond that, reapplication is necessary.
- High Surcharge Fees – Late restoration incurs additional costs (₹10,000 + renewal fees).
- Burden of Proof – Proving genuine use or unintentional delay requires strong documentation.
Why Revival is Crucial for Indian Businesses
- Protects Brand Value – A trademark is tied to customer trust, losing it can harm reputation.
- Prevents Squatting – Third parties may register abandoned marks, leading to legal disputes.
- Maintains Legal Rights – Revival ensures continued protection against infringement.
Best Practices to Avoid Abandonment
✅ Set Renewal Reminders (Trademarks expire every 10 years).
✅ Respond Promptly to Office Actions (Avoid missing deadlines).
✅ Maintain Proof of Use (Keep sales records, ads, and invoices).
✅ Consult a Trademark Attorney – Legal experts ensure compliance.
Secure Your Brand’s Future
An abandoned trademark does not mean the end of a brand’s legal rights. By acting swiftly within one year of abandonment Indian businesses can reclaim their trademarks through Form TM-13 and proper documentation. Proactive management, timely renewals, and legal guidance can prevent abandonment, safeguarding a brand’s legacy in India’s competitive market.
For further assistance, consult the IP India website or seek advice from a registered trademark attorney. Your brand’s identity is worth protecting take action before it’s too late.