Trade Marks: Revised guidelines for calculating renewal dates for applications with priority claim

As you may know, Trade Mark registrations in India are granted for a period of ten years at a time and fall due for renewal six months prior to the end of the validity of the mark. The Indian Trade Marks Act provides that the renewal deadline should be calculated from the "application date". Considering that in case of applications filed with a claim of priority from an application in a convention country, the priority date is to be treated as the date of application and we have always calculated the renewal deadline from such priority date.

However, the Indian Intellectual Property Office (IPO) maintains the deadlines from application date, though the language of the Act does not make any such suggestion and we have always followed the safer approach of calculating the renewal deadline from the priority date.

As the IPO has recently moved towards electronic filing for all renewals, it is not possible to pay the renewals more than 6 months before the IPO deadline (10 years from application date instead of priority date) and hence, we now need to change our practice to be able to pay the renewals.

Therefore, we shall now make the following changes in our practice:

1) For old registrations we shall submit the request within the renewal deadline as calculated from the priority date, but falling within the six months prior to the Indian Application date; 2) For new registrations, we shall submit the requests within the renewal deadline calculated from the Indian Application date.

It is pertinent to note that since we were already following a safer approach, no problems will be caused to our clients by this new practice and we shall keep you informed if there are any further changes in IPO's practice.

For any queries, please feel free to reach us at info@candcip.com.