Duration, Renewal, Removal and Restoration

So there are three windows, and getting them right is what the question tests.

The three windows

The rules

Rule 57(1). An application for renewal shall be made in Form TM-R with the First Schedule fee, and may be made at any time not more than one year before the expiration of the last registration.

Rule 57(2). A request for renewal filed within the prescribed time shall be allowed unless the mark has been removed or cancelled, or is otherwise not renewable under the Act and rules or by an order of a competent court or the Registrar.

Rule 58(1), the notice. Where no renewal application with the fee has been received, the Registrar shall send, not more than six months before the expiration, a notice in Form RG-3 at the address for service, informing the proprietor of the approaching date of expiration and the conditions of renewal.

Rule 58(2) and (3), the late registration cases. These deal with a mark whose renewal date, calculated by reference to the date of application, falls at or before the actual registration. Where the mark is registered within six months before renewal is due, the registration may be renewed by paying the fee within six months after the actual date of registration. Where it is registered after the renewal date, the same six months from the actual date of registration applies. In either case, if the fee is not paid, the Registrar shall, subject to rule 60, remove the mark.

Why those two sub-rules exist. Registration relates back to the date of application under section 23(1). A registration granted eleven years after the application would otherwise be due for renewal the moment it was granted. Rules 58(2) and (3) give the proprietor six months from the actual date of registration.

Rule 59, advertisement of removal. If at the expiration the renewal fee has not been paid, the Registrar may remove the mark and advertise the fact forthwith in the Journal, with the proviso that he shall not remove it if an application for payment of the surcharge is made under the proviso to section 25(3) in Form TM-R within six months of expiry.

Rule 60, restoration. An application under section 25(4) shall be made in Form TM-R within one year from the expiration, with the prescribed fee, and the Registrar shall have regard to the interest of other affected persons while considering it.

Rule 61. Notice and advertisement of renewal and restoration.

Section 26: the one year shadow

The provision. Where a mark has been removed from the register for failure to pay the renewal fee, it shall nevertheless, for the purpose of any application for the registration of another trade mark during one year next after the date of the removal, be deemed to be a trade mark already on the register, unless the Registrar or the High Court is satisfied either:

• (a) that there has been no bona fide trade use of the removed mark during the two years immediately preceding its removal; or
• (b) that no deception or confusion would be likely to arise from the use of the mark applied for by reason of any previous use of the removed mark.

What that does. It stops a rival from watching the register, waiting for a mark to lapse, and immediately registering it while the removed mark's reputation is still alive in the market. For one year the removed mark still blocks.

And it can be got round in two ways, each of which the applicant must establish: that the removed mark was not in bona fide trade use in the two years before removal, or that no deception or confusion is likely.

Note who decides. The words are "the Registrar or the High Court, as the case may be", the substitution of the High Court for the Appellate Board being one of the consequential changes made by the Tribunals Reforms Act, 2021.

Worked example

Sneha Rao's mark RUCHIRA for pickles was registered with effect from 4 April 2016 and expired on 4 April 2026.

Renewal in time. She could have applied on Form TM-R at any time from 4 April 2025 under rule 57(1). Had she done so, renewal would run to 4 April 2036.

The notice. Because she did not apply, the Registrar was required by rule 58(1) to send a Form RG-3 notice not more than six months before 4 April 2026, at her address for service.

She does nothing until 1 August 2026. She is inside the six months after expiry. Under the proviso to section 25(3) and the proviso to rule 59, she applies on Form TM-R with the fee and surcharge, and the Registrar shall not remove the mark and shall renew it for ten years from 4 April 2026.

Change the facts: she does nothing until 1 December 2026. More than six months, less than a year. She must now apply under section 25(4) and rule 60 for restoration and renewal. That is not a right: the Registrar restores only if satisfied that it is just so to do, and rule 60 requires him to have regard to the interest of other affected persons, that is anybody who has adopted a similar mark in the meantime.

Change them again: she does nothing until 2028. The registration is gone and cannot be restored. But note what happens to a rival.

A rival, Bhavna, applies to register RUCHIRA for pickles on 1 September 2026, the mark having been removed on 4 April 2026. Section 26 deems the removed mark to be still on the register for one year, so Bhavna's application meets the removed mark as an earlier mark under section 11. Bhavna can only get past it by satisfying the Registrar that there was no bona fide trade use of RUCHIRA in the two years before removal, or that no deception or confusion would be likely.

What it does NOT mean

Ten years is not the life of the mark. Renewal is indefinite, and TRIPS Article 18 requires that it be so. A trade mark is the only intellectual property right in this book that need never expire.

Removal is not invalidation. A mark removed for non-payment was validly registered throughout its term. Removal for non use under section 47, and rectification under section 57, are different things and are worked in chapters 870 and 760.

And restoration is not automatic. The Registrar must be satisfied that it is just, and rule 60 makes him weigh the interests of others.

Quick revision

s.25(1): ten years, renewable from time to time. s.25(2): renewal runs from the expiration of the last registration, not from the renewal.

s.25(3): notice before expiry, then removal; proviso: no removal if the fee and surcharge are paid within six months of expiry. s.25(4): restoration after six months and within one year, if the Registrar is satisfied it is just, with conditions if he thinks fit.

r.57: Form TM-R, not more than one year before expiry. r.58(1): Form RG-3 notice not more than six months before expiry. r.58(2) and (3): six months from the ACTUAL date of registration where the mark was registered near or after the renewal date. r.59: removal advertised in the Journal. r.60: restoration on Form TM-R within one year, having regard to the interest of other affected persons.

s.26: a mark removed for non-payment is deemed still on the register for ONE YEAR against a new application, unless (a) no bona fide trade use in the two years before removal, or (b) no likelihood of deception or confusion.

Test yourself

1. How long does a registration last, and from when does a renewal run? Ten years under section 25(1). A renewal runs for ten years from the date of expiration of the original registration or of the last renewal, not from the date of the renewal application.

2. Set out the three windows for keeping a registration alive. Renewal on the ordinary fee, which may be applied for not more than one year before expiry and up to expiry; renewal on the fee and a surcharge within six months after expiry, under the proviso to section 25(3); and restoration and renewal after six months and within one year of expiry under section 25(4), if the Registrar is satisfied that it is just.

3. What notice must the Registrar give before removing a mark? Under section 25(3) and rule 58(1), a notice in Form RG-3 sent at the address for service, not more than six months before the expiration, informing the proprietor of the approaching date of expiration and the conditions on which renewal may be obtained.

4. State the effect of section 26. A mark removed from the register for failure to pay the renewal fee is nevertheless deemed to be a trade mark already on the register, for the purpose of any application to register another mark, during the year next after the date of removal.

5. How can an applicant get past a mark removed six months ago? By satisfying the Registrar or the High Court either that there has been no bona fide trade use of the removed mark during the two years immediately preceding its removal, or that no deception or confusion would be likely to arise from the use of his mark by reason of any previous use of the removed mark.