Trademark renewal, assignment and enforcement
A registered mark is not a finished piece of work. It has to be renewed on time, transferred and licensed in a way the register recognises, actually used or it becomes vulnerable, and defended when someone else gets close to it. Each of those has its own window and its own form, and one of them, renewal, has a point past which the mark cannot be recovered at all. This guide covers the whole post registration life of a mark, including what enforcement realistically looks like before anyone goes to court.
Renewal, and the cliff edge at twelve months
Registration lasts ten years, running from the filing date rather than the certificate date, and is renewable indefinitely in ten year blocks measured from the expiry of the last registration. What matters operationally is that there are four distinct windows and they behave very differently.
| When | What is possible | Form and fee, e-filing, per class |
|---|---|---|
| Within the 12 months before expiry | Ordinary renewal under Rule 57. The Registrar separately sends a notice of impending expiry on Form RG-3, not more than six months before, but that notice is a courtesy and not the trigger. | Form TM-R, ₹9,000 |
| 0 to 6 months after expiry | Renewal with surcharge. The proviso to section 25(3) bars the Registrar from removing the mark if this is filed in time. | Form TM-R, ₹4,500 surcharge plus the ₹9,000 renewal fee |
| 6 to 12 months after expiry | The mark has been removed. Restoration and renewal under section 25(4), and it is discretionary: the Registrar acts only if satisfied that it is just to do so. | Form TM-R, ₹9,000 restoration plus the ₹9,000 renewal fee |
| More than 12 months after expiry | Nothing. There is no statutory route back. The only option is a fresh application, which loses the original date, re-enters examination, and re-opens a four month opposition window during which anyone who has adopted the name in the meantime can object. | Form TM-A, as a new application |
That last row is why renewal diaries matter more than they appear to. Losing a mark that has been in use for twenty years, because a renewal notice went to a former agent's email address, is a genuinely unrecoverable loss of an asset.
Transferring a mark, and why recordal is not optional in practice
Section 38 makes a registered mark assignable and transmissible with or without the goodwill of the business, for all or some of the goods or services. Section 39 does the same for unregistered marks. Sections 40 and 41 then restrict assignments that would create multiple exclusive rights in confusingly similar marks, or that would split rights geographically within India, and allow the proprietor to obtain the Registrar's certificate as to validity before assigning.
Assigning without goodwill has its own clock
Under section 42 an assignment made otherwise than in connection with the goodwill of the business does not take effect at all unless the assignee applies to the Registrar for directions as to advertisement of the assignment, and then advertises it as directed. The application must be made within six months of the assignment, extendable by the Registrar by up to three months in aggregate, and no further. It is made on Form TM-P. Two carve-outs sit in the Explanation: a partial assignment accompanied by transfer of the goodwill in those goods or services only, and an assignment of a mark used for goods exported from India or services used outside India accompanied by transfer of the goodwill of that export business.
The recordal point
Section 45 requires a person who becomes entitled by assignment or transmission to apply to the Registrar to register their title, on Form TM-P, at ₹9,000 by e-filing per mark. The Act sets no deadline for doing so. The sanction is in section 45(4) instead, and it is sharper than a deadline: until the application is filed, "the assignment or transmission shall be ineffective against a person acquiring a conflicting interest in or under the registered trade mark without the knowledge of assignment or transmission".
In plain terms: you own the mark as between you and your seller, but not as against a third party who deals with the seller in good faith. This is the point that surfaces in due diligence, when a buyer discovers the register still shows a company that was merged away four years ago. One operational note: it is the Registry's published practice, though not a requirement of the Rules, to give the previous registered proprietor one month's notice when a change of proprietorship is filed, and to process the request only after that month has run.
Licensing: registered users, permitted use, and quality control
Indian law recognises two kinds of authorised use, and the difference is easy to miss because both are called "permitted use" in section 2(1)(r).
- Limb (i), the registered user. Recorded on the register under section 49, on a joint application by the proprietor and the proposed user on Form TM-U at ₹4,500 by e-filing. The application must be supported by the written agreement and by an affidavit from the proprietor stating, among other things, "the degree of control by the proprietor over the permitted use which their relationship will confer".
- Limb (ii), the unrecorded licensee. Use by someone else, connected in the course of trade with the goods or services, "by consent of such registered proprietor in a written agreement". No recordal is required for this to count as permitted use.
So an unrecorded licence is not fatal in India, which is a change from the position under the 1958 Act and is the reason a lot of older commentary overstates the risk. But three consequences still follow and they are worth designing around:
- Proving use. Section 48 deems permitted use to be use by the proprietor and not by the other person, which is what keeps a licensed mark safe from a non-use attack. Running that argument is straightforward for a registered user and evidential work for an unrecorded one, who has to prove permitted use from the contract and from conduct.
- Quality control is the pivot. The statute's focus on the degree of control is not administrative box-ticking. A bare licence with no exercised control invites the argument that the mark no longer denotes a single trade source, which goes to distinctiveness and opens the registration to attack.
- Only one of them can sue. Under section 52(1) a registered user may institute infringement proceedings in his own name as if he were the registered proprietor, making the proprietor a defendant; the proprietor added that way is protected from costs unless he appears and takes part. Section 53 then says the opposite for the other kind of licensee in terms: a person falling within limb (ii) has no right to institute any proceeding for infringement. If enforcement by the licensee matters commercially, recordal is not optional.
Non-use: the five year and three month arithmetic
A registration that is not used is vulnerable. Section 47 lets any person aggrieved apply to the Registrar or the High Court to take the mark off the register, on either of two grounds:
- 47(1)(a): registered without any bona fide intention to use, and in fact not used up to a date three months before the application.
- 47(1)(b): a continuous period of five years or longer, running from the date the mark was actually entered in the register, during which there was no bona fide use, with that period ending three months before the application.
Hence the arithmetic in the panel above: five years of non-use, plus a three month buffer before the application is filed. Note the trigger, because it is often stated wrongly: the five years runs from actual entry in the register, not from acceptance and not from the completion of any opposition. There are defences. Section 47(3) protects non-use due to "special circumstances in the trade", expressly including restrictions on use imposed by law or regulation, and the proviso allows relief to be refused where the mark has been used on goods of the same description. Section 47(2) also lets the Registrar impose limitations as to place or market rather than removing the mark outright.
Section 57 is a different tool and does not contain a non-use ground. It is worth saying because guidance written from English sources routinely blurs the two. Section 57(1) deals with cancelling or varying a registration for contravention of, or failure to observe, a condition entered on the register; section 57(2) with an entry made without sufficient cause, wrongly made, or wrongly remaining on the register; and section 57(4) with the Registrar acting of his own motion after notice and a hearing. If the complaint is non-use, the provision is section 47.
Where cancellation and rectification actually go in 2026
If you learned this area before 2021, the forum has changed and a great deal of published guidance has not caught up. The Intellectual Property Appellate Board no longer exists. The Tribunals Reforms Act 2021, deemed in force from 4 April 2021, substituted "High Court" for "Appellate Board" throughout the Trade Marks Act, renamed Chapter XI from "Tribunals and Appeals" to "Appeals", and omitted the sections that constituted the Board.
The current position:
- Rectification or cancellation at first instance: to the Registrar on Form TM-O, or to the High Court. Under section 57(3) the applicant elects between them.
- Appeals from the Registrar: to the High Court, under section 91, which is now headed "Appeals to High Court".
- Where validity is put in issue in an infringement suit: section 125 sends the rectification application to the High Court rather than the Registrar, and section 124 governs the stay of the suit meanwhile.
- In Delhi, these go to the Intellectual Property Division created by the Delhi High Court's IPR Division Rules 2022, which also took over the IPAB matters transferred on abolition.
Section 57(2) is the workhorse: an entry may be struck out or amended on the ground that it was made without sufficient cause, was wrongly entered, has ceased to have effect, does not accurately represent the rights of the proprietor or registered user, or is no longer required. That is the route for an invalidity attack based on sections 9 or 11, on prior rights, or on misrepresentation in obtaining the registration.
Terminology, because it dates a document instantly. Use "rectification of the register" and "cancellation or variation of registration" under section 57, and "removal for non-use" under section 47. Do not use "IPAB", "Appellate Board", or the old form number TM-26, which belonged to the 2002 Rules.
A note on sources, and it is worth thirty seconds of your time. The Appellate Board was abolished by the Tribunals Reforms Act 2021 with effect from 4 April 2021, and its jurisdiction under sections 47, 57 and 91 passed to the High Court. Copies of the Act in circulation, including some described as amended to date, still carry the pre-2021 text and still refer to the Appellate Board. Much of the published guidance on rectification and cancellation was written against that older text and is now wrong on forum. Check the amending Act, not a consolidated copy, before relying on any statement about where an application is made.
Infringement, passing off, and what the remedies actually are
Section 28 gives the registered proprietor the exclusive right. Section 29 then sets out nine ways it can be infringed, and the range is wider than most people assume:
- 29(1) and 29(2): identical or deceptively similar marks on identical or similar goods or services, where use is likely to cause confusion, which the section says includes likelihood of association.
- 29(3): in the double identity case, identical mark on identical goods, the court shall presume a likelihood of confusion. The burden shifts.
- 29(4): the dilution limb. Use on dissimilar goods where the registered mark has a reputation in India and the use takes unfair advantage of, or is detrimental to, its distinctive character or repute.
- 29(5): use of the mark as a trade name or business name, which is the provision that connects back to company name clearance.
- 29(6): what counts as use, including affixing to packaging, stocking, offering services, and importing or exporting goods under the mark.
- 29(9): where the distinctive elements are words, infringement can be by spoken use, not only visual representation.
Section 30 then limits all of this, preserving honest descriptive and referential use, comparative advertising within honest practices, and exhaustion.
Passing off runs alongside, under section 27(2), and protects goodwill rather than the mark as property. It reaches unregistered marks, trade dress, get-up, shapes, business names and domain names, and is pleaded in the alternative in almost every Indian suit. Its three elements, goodwill or reputation, misrepresentation, and damage, were settled for India by the Supreme Court in S. Syed Mohideen v. P. Sulochana Bai, which adopted the classic English formulation and confirmed that the Court had already given it its imprimatur in Laxmikant V. Patel v. Chetanbhat Shah.
Remedies
Section 134 requires any suit for infringement or passing off to be brought in a court not inferior to a District Court. Section 135(1) provides for "an injunction and, at the option of the plaintiff, either damages or an account of profits, together with or without any order for the delivery-up of the infringing labels and marks for destruction or erasure". In practice that statutory list is supplemented by ex parte interim injunctions, John Doe orders against unidentified defendants, local commissioner appointments to seize and inventory infringing stock, and, because IP suits are commercial disputes, actual costs.
The criminal route
Counterfeiting is also a crime, and the offences carry a minimum sentence, which surprises people. Applying a false trade mark or false trade description (section 103), and selling goods or providing services to which one has been applied (section 104), each carry imprisonment of not less than six months extending to three years and a fine of not less than ₹50,000 extending to ₹2,00,000, though a court may go below the minimum for adequate and special reasons recorded in the judgment. A second or subsequent conviction (section 105) carries not less than one year up to three, and a fine of not less than ₹1,00,000 up to ₹2,00,000. These offences are cognizable, and a police officer not below the rank of Deputy Superintendent may search and seize without a warrant, but only after obtaining the Registrar's opinion on the facts of the case and then abiding by it.
One currency point, because Chapter XII was pruned in 2024: three of its sections were omitted and two new ones on adjudication of penalties and appeals were inserted. The counterfeiting offences above were untouched, but any older summary of the chapter as a whole is out of date.
Before anyone goes to court
The cease and desist letter, and the risk of sending one
A cease and desist letter has no statutory basis. It fixes the record on knowledge, which matters to damages, and it is the standard trigger for a negotiated coexistence, an undertaking, or a takedown. But it carries a specific statutory risk in India that does not exist everywhere: section 142, groundless threats of legal proceedings. A person threatened with infringement proceedings can sue for a declaration that the threats are unjustifiable, an injunction restraining them, and damages, unless the person making the threat satisfies the court that the mark is registered and that the acts complained of do or would constitute infringement.
Two exceptions matter. Under section 142(2) the provision does not apply where the proprietor, or a registered user acting under section 52(1), with due diligence commences and prosecutes an infringement action against the person threatened: in other words, back the letter with a suit and the exposure falls away. Under section 142(3) a legal practitioner or registered trade marks agent is not liable for acting in a professional capacity on a client's instructions. Section 142(4) puts a suit under the section in a District Court or above.
The practical drafting point stands regardless: a letter that overstates the scope of the registration, or threatens in respect of goods outside the specification, is the classic exposure.
Pre-institution mediation
IP disputes are commercial disputes: section 2(1)(c)(xvii) of the Commercial Courts Act 2015 expressly lists disputes over registered and unregistered trademarks, copyright, patents, designs, domain names, geographical indications and semiconductor integrated circuits. Section 12A of that Act then provides that a suit "which does not contemplate any urgent interim relief" shall not be instituted unless pre-institution mediation has been exhausted. Mediation runs for three months, extendable by two with consent.
The Supreme Court has held section 12A mandatory, with a plaint filed in breach liable to rejection under Order VII Rule 11, a power the court may exercise even of its own motion (Patil Automation v. Rakheja Engineers, 2022). It has also held that the urgency carve-out is not a formality that can be drafted into existence: the court makes a holistic assessment of the suit, the cause of action and the interim prayer to satisfy itself that the urgency is genuine and not a mask to bypass mediation (Yamini Manohar v. T.K.D. Keerthi, 2023). In practice most infringement suits are filed with a real application for urgent interim relief and so fall outside section 12A; a suit seeking only damages or declaratory relief, or relief about long-known conduct, is exposed.
Customs recordal
For counterfeits arriving by import, the Intellectual Property Rights (Imported Goods) Enforcement Rules 2007 let a right holder record its rights with Customs and have infringing consignments suspended at the border. Recordal is made once, online, through the Customs IPR recordation portal, and is visible to Customs at every port, which replaced the old practice of applying separately at each Custom House. The mechanics: an application fee of ₹2,000; the Commissioner registers or rejects within 30 working days; a registration is valid for a minimum of one year; a bond and an indemnity bond are required; and once registered, import of the goods is deemed prohibited. On suspension, the right holder must join the proceedings within ten working days, extendable by ten more, and within three working days for perishable goods. A 2018 amendment also obliges the right holder to tell the Commissioner within one month if the underlying right is amended, cancelled, suspended or revoked.
One scope point that is widely got wrong: patents are no longer recordable. The same 2018 amendment removed the Patents Act from the scheme. Trade marks, copyright, designs and geographical indications remain. Any page still listing patents as a recordable right is out of date.
Watch
The Trade Marks Journal is published weekly, and the four month opposition clock runs from the publication date of the issue in which a mark is advertised. A watch is therefore only useful if it is run against every weekly issue. Miss the window and the mark registers, after which the only route is a section 57 rectification, which is materially more expensive.
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This page is general information, not professional advice. Indian trademark procedure and the forums that hear these disputes have changed materially since 2021, and how any of it applies depends on your own facts. Take professional advice before acting on anything on this page. We are happy to be that adviser, but we do not act on a web page, ours or anyone else's, without one.