Duration, Renewal, Removal (Section 25)

Section 25 of the Trade Marks Act, 1999 fixes the term of a registered trade mark at ten years and prescribes the mechanism by which the term can be renewed, the mark removed for non-payment, and the removed mark restored to the Register. The section is the temporal architecture on which every other right under the Act sits. The Section 28 exclusive right, the Section 29 cause of action for infringement, and the Section 31 presumption of validity all turn on whether the mark is in force on the date in question. Section 25 is the section that decides that.

The four-part scheme reads naturally. Sub-section (1) fixes the ten-year duration. Sub-section (2) provides for renewal for further periods of ten years. Sub-section (3) requires the Registrar to give notice of expiration before he removes a mark for non-payment of the renewal fee. Sub-section (4) provides for restoration of a removed mark within one year of the date of expiration. The section is short, its mechanics are precise, and its operation is exam-frequent.

Section 25(1) — Ten-year duration

Section 25(1) provides that the registration of a trade mark, after the commencement of the Trade Marks Act, 1999, shall be for a period of ten years. The clock starts not from the date of registration — that is, the date the certificate is issued — but from the date of the application for registration. The point matters because the gap between application and registration is often substantial. An application filed in 2018 and registered in 2021 has, on the date of registration, only seven years left before the first renewal falls due.

The ten-year term replaced the seven-year term that the predecessor Trade and Merchandise Marks Act, 1958 had prescribed. The change to a ten-year cycle aligned the Indian regime with international practice, including the regime under the WIPO-administered Madrid Protocol that India joined in 2013. The longer cycle reduces the administrative burden of renewal on both proprietors and the Registry, while preserving the discipline that an expired mark falls off the Register and ceases to attract the statutory protections that the Section 9 absolute-grounds enquiry and the Section 18 examination process originally established.

Section 25(2) — Renewal for further periods of ten years

Section 25(2) authorises the Registrar to renew the registration on application made in the prescribed manner and on payment of the prescribed fee. Each renewal is for a further period of ten years from the date of expiration of the original registration or of the last renewal. The renewal is therefore perpetual in principle: a mark can subsist on the Register indefinitely so long as the proprietor pays the renewal fee at each ten-year interval.

The perpetual character of trade-mark registration is one of the structural distinctions between trade-mark protection and the other intellectual property regimes. Patents lapse after twenty years; copyright in literary works lasts for the life of the author plus sixty years; designs are protected for ten years extendable by five. Trade-mark registration alone is renewable in perpetuity. The reason is functional. A trade mark identifies the source of goods or services; so long as it continues to perform that function in the market, the law has no reason to extinguish the proprietor's right.

Renewal is, however, conditional on payment of the prescribed fee within the prescribed time. The Trade Marks Rules, 2017 fix the time as not less than six months and not more than one year before the date of expiration of the registration. An application filed within that window, on payment of the prescribed renewal fee, secures a fresh ten-year term commencing on the date of expiration of the previous term. The renewal does not itself involve a fresh examination of the substantive registrability of the mark; the Registrar's role at renewal is largely ministerial, confined to verifying payment and entering the renewal in the Register.

Section 25(3) — Notice of expiration and removal for non-payment

Section 25(3) imposes a mandatory procedural step before the Registrar may remove a trade mark from the Register for non-payment of the renewal fee. At the prescribed time before the expiration of the last registration of the trade mark, the Registrar must send a notice in the prescribed manner to the registered proprietor of the date of expiration and the conditions as to payment of fees and otherwise upon which a renewal of the registration may be obtained. If, at the expiration of the time prescribed in that behalf, the conditions have not been duly complied with, the Registrar may remove the trade mark from the Register.

The provision contains two procedural safeguards. First, the Registrar must give notice — the proprietor is entitled to be told that the term is about to expire and what must be done to renew. Failure of notice is a defect that can defeat removal. Second, the Registrar's power to remove is discretionary, not mandatory. The use of the word may in Section 25(3) gives the Registrar room to consider the circumstances of non-payment before exercising the removal power. In practice, the Registrar removes a mark for non-payment only after the prescribed grace period and after the conditions for restoration under Section 25(4) have lapsed.

The proviso to Section 25(3) is important. It states that the Registrar shall not remove the trade mark from the Register if an application is made in the prescribed form and the prescribed fee and surcharge is paid within six months from the expiration of the last registration of the trade mark. This six-month grace period — running from the date of expiration, not from the date of notice — is the statutory cushion that protects proprietors who miss the renewal deadline by a short margin. Payment of the renewal fee plus the prescribed surcharge within the six-month grace window secures the renewal as if the mark had never been due for removal.

Section 25(4) — Restoration of a removed mark

Section 25(4) provides for restoration of a trade mark that has been removed from the Register for non-payment of the renewal fee. Where a trade mark has been removed under sub-section (3), the Registrar shall, on application made in the prescribed form within one year from the expiration of the last registration of the trade mark, and on payment of the prescribed fee and the prescribed surcharge, restore the trade mark to the Register and renew the registration of the trade mark either generally or subject to such conditions or limitations as he thinks fit to impose, for a period of ten years from the expiration of the last registration.

The restoration window is one year from the date of expiration of the last registration, of which the first six months are the grace period under the proviso to Section 25(3) and the next six months are the restoration period under Section 25(4). During the grace period, the renewal is largely automatic on payment of fee plus surcharge. During the restoration period, the Registrar exercises a discretion: he may restore the mark either generally or subject to such conditions or limitations as he thinks fit. The restored registration runs for a fresh ten-year term commencing not on the date of restoration but on the date of expiration of the last registration. The proprietor does not lose ten years; the time line resumes as if the lapse had not occurred.

The discretion to attach conditions on restoration is the procedural counterpart of the third-party interests that may have arisen during the period of removal. A trader who has begun honestly to use a similar mark in reliance on the apparent removal has an equitable interest that the Registrar may protect by attaching limitations to the restored mark. The Registrar's discretion at this stage is therefore not formal; it is the substantive valve by which the public interest in stable use is reconciled with the proprietor's interest in a renewed registration.

Effect of removal — what survives, what falls

A trade mark removed from the Register under Section 25(3) loses the statutory rights that registration confers. The Section 28 exclusive right ceases. The Section 29 cause of action for infringement of a registered trade mark is no longer available, because the cause of action presupposes a subsisting registration. The Section 31 presumption of validity falls away. The Section 134 forum-of-suit advantage — the right to sue at the place of the proprietor's residence or business — disappears with the registration that founded it.

What survives is the common-law goodwill in the mark. A proprietor whose mark has been removed retains the right to sue for passing off under Sections 27, 134, and 135 of the Act, on proof of the three classical ingredients — goodwill, misrepresentation, and damage. The passing-off remedy is therefore the post-removal residue of trade-mark protection, available even after the formal registration has lapsed. The remedy is, however, available only on proof of subsisting goodwill at the date of the misrepresentation; the proprietor cannot invoke the remedy on the strength of historical reputation alone.

The Bombay High Court in Ram Rakhpal v. Amrit Dhara Pharmacy-line of cases has made clear that property in a trade mark can be acquired under common law by continuous use or by registration under the Act. Property in a registered trade mark can be lost in many ways: by non-payment of the renewal fee under Section 25(3) and for other reasons. Property in a common-law trade mark can be lost by non-use for a length of time or by unrestricted piracy. The two routes to loss are different but converge on the same end-state — the mark ceases to be the proprietor's exclusive property and is open to honest concurrent use by competitors.

Renewal as a procedural discipline

Renewal under Section 25(2) is a procedural discipline, not a substantive enquiry. The Registrar at renewal does not re-examine the mark for distinctiveness under Section 9 or for similarity to earlier marks under Section 11. The mark, once registered, enjoys a presumption of continued validity — much like the presumption that the Section 28 exclusive right generates in infringement proceedings — until either it is removed for non-payment under Section 25(3), is rectified or expunged under Section 57, or is invalidated in collateral proceedings under Section 124. The renewal exercise is the proprietor's responsibility to keep alive a registration whose substantive integrity is presumed.

The procedural nature of renewal means that the proprietor's only obligations at this stage are to file the prescribed form, pay the prescribed fee, and ensure that the Registrar's records reflect the current address for service. A renewal application made in time and accompanied by the correct fee secures the renewal even where the mark has, in the intervening ten years, become descriptive in the trade or has acquired a reputation for ill-repute. The remedies for those substantive defects are not at renewal but at rectification under Section 57 or at the infringement stage under Section 124. Renewal does not heal substantive defects, but neither does it expose them.

Removal for non-use — the Section 47 contrast

Section 25(3) removal is for non-payment of the renewal fee. It is procedural removal. The Act provides separately, under Section 47, for removal of a registered trade mark on the ground of non-use. Section 47 removal is substantive: the applicant must show that the mark was registered without any bona fide intention to use it and there has been no bona fide use up to a date three months before the application, or that there has been no bona fide use for a continuous period of five years from the date on which the mark was actually entered in the Register. The two routes to removal — Section 25(3) for non-payment and Section 47 for non-use — operate independently of the rectification route under Section 57 and of any challenge to validity raised in opposition proceedings under Section 21. A proprietor who pays the renewal fee but does not use the mark protects the registration against Section 25(3) removal but remains exposed to Section 47 removal on the application of any aggrieved person.

For aspirants, the contrast is exam-frequent. Section 25(3) is procedural, available only to the Registrar, and triggered by non-payment. Section 47 is substantive, available to any aggrieved person, and triggered by non-use. The first protects the financial integrity of the Register; the second protects the public interest in keeping unused marks off the Register so that the symbols can be deployed by genuine traders.

Renewal and the rights of third parties

The ten-year cycle has a practical effect that often surfaces in litigation. A trade mark whose renewal application is pending — that is, the proprietor has filed for renewal within the prescribed window but the Registrar has not yet entered the renewal — is treated for all practical purposes as a subsisting registration. The Section 28 exclusive right and the Section 29 cause of action remain available. The Registry's administrative delay does not prejudice the proprietor who has discharged his procedural obligation.

The position is different where the renewal application is filed within the six-month grace period under the proviso to Section 25(3). During the grace window, the registration is technically expired but is restored by payment of fee plus surcharge. Acts of the proprietor between the date of expiration and the date of payment of the surcharge are protected only retrospectively, on the fiction that the renewal was always in time. A third party who, in the gap, has begun honest use of a similar mark may have an arguable defence on the ground that the mark was not on the Register at the relevant date. The Registrar's discretion to attach conditions on Section 25(4) restoration is the procedural recognition of this third-party interest.

The position becomes harder still where the registration has been removed under Section 25(3) and a third party has, in the period of removal, applied for registration of a similar mark. The third party's application is examined on the basis of the Register as it stands at the date of examination, which means the removed mark does not feature as an earlier mark on the Section 11 relative-grounds search. If the third party's application is accepted, advertised, and registered without opposition, the original proprietor's restoration application under Section 25(4) may be granted subject to limitations that protect the third party's intervening rights. The Register reflects, in such a case, the layered consequences of the original proprietor's lapse.

Renewal in the assignment and licensing context

The duration and renewal regime sits behind every assignment, transmission, and licence under the Act. An assignment of a registered trade mark under Sections 37 to 45 transfers the registration with all its attendant procedural obligations, including the obligation to file the renewal application. A purchaser of a registered trade mark inherits the residue of the ten-year term and assumes the responsibility of paying the renewal fee at the next ten-year interval. Failure of the purchaser to renew exposes the assigned mark to Section 25(3) removal exactly as it would the original proprietor.

The licensing of a registered trade mark — whether as a registered user under the older regime or as a permitted user under the 1999 Act — is similarly conditional on the continued subsistence of the registration. A licence of a removed mark is a licence of nothing; the licensee acquires no statutory right and is exposed to infringement by a registered third party who in the meantime has obtained registration of a similar mark. The renewal discipline is therefore commercially load-bearing for licensees as well as proprietors.

The same logic explains why diligence at the time of acquiring a trade-mark portfolio focuses on the renewal status of each registration. Due-diligence enquiries before an assignment ordinarily verify the date of last renewal, the date of next expiration, and the existence of any pending notice of expiration under Section 25(3). A registration whose expiration falls within the months following the assignment is a registration whose renewal is the assignee's first procedural obligation as proprietor. The sale of a brand portfolio that includes lapsed or about-to-lapse registrations transfers, in effect, only the assignor's residual common-law goodwill in those marks; the statutory rights have either fallen away or are about to do so.

The Section 25 regime is, in this sense, the temporal hinge on which every other provision of the Trade Marks Act, 1999 turns. Substantive rights are valuable only for so long as the registration that confers them remains on the Register. Procedural compliance with the ten-year renewal cycle is the cheapest insurance against losing those rights.

The MCQ angle — what to lock in

Five points repay rote memorisation. First, the duration — registration is for ten years from the date of application, not the date of registration; the same operative date governs the effect of registration under Section 28 and the priority for opposition under Section 21. Second, the renewal cycle — renewal is for further periods of ten years and is in principle perpetual, distinguishing trade-mark protection from patents (twenty years) and designs (ten plus five). Third, the notice of expiration — Section 25(3) requires the Registrar to give notice before removal, and failure of notice can defeat removal. Fourth, the grace period — the proviso to Section 25(3) gives a six-month grace window from the date of expiration during which payment of fee plus surcharge secures the renewal. Fifth, the restoration window — Section 25(4) allows restoration within one year from the date of expiration on payment of fee plus surcharge, with the Registrar's discretion to attach conditions or limitations.

Three further distinctions are worth memorising. Section 25(3) removal is for non-payment of fee; Section 47 removal is for non-use. Section 25(4) restoration is the proprietor's last in-Registry remedy; rectification under Section 57 is then the only route. And the loss of registration does not extinguish common-law rights — the proprietor retains the passing-off action under Sections 27, 134, and 135 on proof of subsisting goodwill, misrepresentation, and damage. For the broader subject map, see the Sections 18 to 24 procedure for registration that produces the registration whose duration Section 25 governs, and the assignment and transmission chapter that explains how the renewed registration may pass between proprietors during its ten-year term.

Frequently asked questions

From what date does the ten-year duration of a registered trade mark run?

The ten-year duration runs from the date of the application for registration, not from the date the certificate of registration is issued or the date the entry is made in the Register. Section 25(1) of the Trade Marks Act, 1999 ties the operative date back to the filing date. Where the gap between application and registration is several years — as is common in practice — the proprietor has only the residue of the ten years remaining on the date of registration before the first renewal falls due.

Is renewal of a trade mark perpetual?

Yes, in principle. Section 25(2) authorises the Registrar to renew the registration for further periods of ten years on application made in the prescribed manner and on payment of the prescribed fee. There is no statutory cap on the number of times a registration may be renewed. So long as the proprietor pays the renewal fee at each ten-year interval, the registration may subsist on the Register indefinitely. This perpetual character distinguishes trade-mark registration from patents (twenty years) and designs (ten years extendable by five).

What is the grace period for late renewal of a trade mark?

Six months from the date of expiration of the last registration. The proviso to Section 25(3) of the Trade Marks Act, 1999 directs that the Registrar shall not remove the trade mark from the Register if an application is made in the prescribed form and the prescribed fee and surcharge is paid within six months from the expiration of the last registration. The grace period runs from the date of expiration, not from the date of any notice. Payment of the fee plus the surcharge within the window secures the renewal as if the mark had never been due for removal.

Within what time can a removed trade mark be restored to the Register?

One year from the date of expiration of the last registration. Section 25(4) of the Trade Marks Act, 1999 empowers the Registrar to restore a removed mark on application made within that period, on payment of the prescribed fee and surcharge, and on such conditions or limitations as he thinks fit to impose. The first six months of the year are the grace period for late renewal; the next six months are the restoration period proper. The restored registration runs from the date of expiration of the last registration, not from the date of restoration.

What is the difference between removal under Section 25(3) and removal under Section 47?

Section 25(3) removal is procedural — it is triggered by non-payment of the renewal fee and is exercised by the Registrar of his own motion after notice of expiration. Section 47 removal is substantive — it is triggered by non-use of the mark for a continuous period of five years from the date of entry, or by registration without any bona fide intention to use, and is available on the application of any aggrieved person. The two routes operate independently of each other, and a proprietor who pays the renewal fee remains exposed to Section 47 removal if the mark is not put to bona fide use.

Does removal of a trade mark from the Register extinguish all rights of the proprietor?

No. Removal extinguishes the statutory rights that registration confers — the Section 28 exclusive right, the Section 29 cause of action for infringement, the Section 31 presumption of validity, and the Section 134 forum-of-suit advantage all fall away. What survives is the common-law goodwill in the mark. The proprietor retains the right to sue for passing off under Sections 27, 134, and 135 of the Act, on proof of the three classical ingredients — subsisting goodwill at the date of the misrepresentation, misrepresentation by the defendant, and damage to the plaintiff.