Trade marks can be very valuable to your business. They identify and protect the distinguishing features of your business from those of your competitors. A trade mark can be a competitive advantage in the marketplace, protects your business against potential infringement. You can apply for a national trade mark, a European trade mark or an international trade mark, depending on where you are seeking protection. This will largely depend on where you plan to conduct business.
Renewing your trade mark is one of the most important steps you can take if you want to avoid cancellation. A qualified trade mark solicitor can help you with trade mark management in the long term and can facilitate the renewal process of your mark, allowing you to continue to enjoy its protection.
Contents:
- How often must a trade mark be renewed?
- When can I renew my trade mark and how long does it typically take?
- Can trade marks be renewed after the renewal deadline?
- What happens if I don’t renew my trade mark
- Can I renew a trade mark if I have made a modification to it?
- What are the common reasons for a trade mark renewal application being rejected?
- Can I renew a trademark if it is currently involved in a legal dispute?
- How do I renew my trade mark?
- How much does it cost to renew a trade mark?
- How can I check the status of my trade mark renewal?
- What do I need to do after my trade mark has been renewed?
- Summary
How often must a trade mark be renewed?
A trade mark is protected for 10 years from the date on which it was filed. Once a trade mark is granted, it can then be renewed every 10 years. There is no limit to the number of times you can renew your trade mark.
You must demonstrate that you are using the trade mark in order for it to remain valid. This use must be within the class of goods and services you specified on your original application. This rule prevents unfair monopolies from being created. In order to successfully apply for a trade mark, you need to be able to show that you are already using it in your business. If you then fail to use your mark for a period of five years or more (‘non-use’), your mark will be vulnerable to challenges from third parties. This use must be ‘genuine’, which means it must be within the category of goods and services you have specified. Trade marks can also be challenged as ‘diluted’, which means they have become so commonplace in the market that they have consequently lost their distinctive character.
When can I renew my trade mark and how long does it typically take?
A trade mark can be renewed 3 to 6 months before the expiry date.
The IPO, EUIPO or WIPO will send a reminder that the trade mark is due for renewal 6 months before the expiry date. You will then need to complete a form and pay a renewal fee. In the UK, the form can be sent online or by post. For a European mark, the form can be completed using EUIPO’s online request form, and for an international trade mark the renewal form can be completed through their online portal eMadrid.
The request for renewal has to include the name of the trade mark owner or legal representative, the trade mark registration number, the class of goods and services the mark is being renewed for, and proof of payment of the renewal fee.
After the form is submitted and the renewal fees are paid, depending on where you decided to seek protection, the respective intellectual property offices will check your application. They will notify you of any problems and, if the application is successful, they will issue a certificate for the renewal of your trade mark, which will confirm your mark is registered for the subsequent 10 years. The trade mark renewal will be published in the Trade Mark Journal for a national application, the European Trade Mark Bulletin for an EU trademark, and the WIPO Gazette of International Marks for international trade mark renewals.
It is advisable that you use a legal representative for trade mark renewals. For a relatively small fee a trade mark solicitor can guide you through the trade mark renewal process, ensuring you complete the form correctly before the renewal deadline. You could potentially lose your trade mark rights if you do not renew your trade mark in the expected time frame.
Can trade marks be renewed after the renewal deadline?
If you miss the deadline, the mark will appear as ‘expired’ on the register. Don’t panic! There is a 6-month grace period to renew your mark in order to avoid losing it completely. A fee of £50 is required in case of late renewals for UK applications. For EU trademarks the late renewal request should be accompanied by the renewal fee and a 25 percent surcharge. For international trade marks the renewal fee is required plus an additional 50 percent surcharge. If you miss the extended deadline, your mark will expire completely. For UK trade marks, there is a tricky process to revive your mark; for EU or international marks, this is not possible at all.
What happens if I don’t renew my trade mark
If your UK trade mark is not renewed before the end of the grace period, it will lapse and be removed from the register. The only way to save your mark following this is to send an application for it to be restored. This is done one year after the expiry date. You must submit a written application explaining why the trade mark was not renewed in due time, and that failure to renew was due to unplanned circumstances. There is an extra fee of £100 that has to be paid, which will not be refundable if the application is unsuccessful.
The process is complicated and can be extremely difficult. If your trade mark has not been renewed after the grace period, it is very important to seek legal counsel.
If your trade mark is restored and, while the trade mark was expired, a similar additional trade mark is registered, your trade mark solicitor can help you prevent further infringement. If the third party can prove they used the new mark in good faith, while yours was lapsed, they wouldn’t be liable for trade mark infringement from the period your mark lapsed until restoration.
For EU or international marks, once the renewal lapses or is filed after the grace period, EUIPO or WIPO will remove the mark from the register and inform the owner of the mark that their trade mark is cancelled. A notice of cancellation will be published in the EUTM Bulletin and WIPO Gazette of International Marks.
Can I renew a trade mark if I have made a modification to it?
The law allows for modifications in case you need to update personal details, surrender your trade mark rights, or correct a mistake on the register.
In the UK, you can amend your application in order to restrict the goods and services the trade mark was registered for. Very small changes can be made to the trade mark itself, but these changes must not affect the identity of the trade mark. It is not possible to add further classes of goods or services without making a new application.
Alterations to EU trade marks are generally limited. As with the UK, you can make changes if there are unforeseen circumstances or changes to the mark, provided they do not change the identity of the mark itself. If you wish to make a change, you can submit an alteration request specifying the element of the trade mark that needs alteration, and a version of that element in its new form.
With international trade marks, small changes to the application are also possible, such as changes to the trade mark owner’s details or change of ownership for some of the protected territories. If your application is successful, the new owner will receive a new registration number. As with EU and UK marks, you can only limit (and not expand) their goods and services. You can also remove one or more designating countries in which you seek protection.
Please note that if you have an international trade mark on an EU designated territory and you do not wish to renew, your application can be converted into national marks or subsequent designations on territories that are part of the Madrid Protocol. If you failed to renew your mark after the grace period, or your mark was cancelled or not renewed for all the contracting parties designated in your original application, it may not be possible to do so.
All amendments to trade marks need to be within the scope of the original application. In many cases, it can be difficult to assess whether a proposed amendment to your mark has altered its character or meaning. As such, it is often easier or more practical to consider filing a new trade mark application and allow the previous mark to expire.
What are the common reasons for a trade mark renewal application being rejected?
A renewal application will be rejected if the renewal fees are not paid in full at the time of filing the renewal application or if the details relating to the mark or the goods and services covered by the mark are incorrect on the renewal form. Other reasons for rejection could include having a different owner on the Register to the applicant for renewal or the renewal not being filed within six months’ of the renewal date so that the mark has expired. Some of these reasons for objection can be overcome, for example, by filing an assignment if the owner of the mark has changed or by filing an application to restore the mark to the Register, if it has expired. These are complicated legal procedures and you should appoint a trade mark lawyer to act for you in order to ensure that the objection has the best chance of being overcome.
Can I renew a trademark if it is currently involved in a legal dispute?
You can still renew your trade mark if it is involved in a dispute such as a trade mark opposition or cancellation proceedings in the tribunal or infringement proceedings in the court. You should do so if your registration is due to expire before the appeal process for the dispute has ended and a final order has been made against you, cancelling your registration in full. If you are successful or partially successful in the dispute, your registration may remain valid and you will be able to renew it in full or in part after the decision.
How do I renew my trade mark?
It is possible to complete trademark renewal applications on your own. These can be done online or by post, depending on where you are registering, by contacting the relevant office. The process can be complex and challenging, especially for alterations or late applications. Any errors can lead to potential costs for your business and the loss of protection. Harper James can guide you through the process and ensure your application stands the best possible chance of success.
How much does it cost to renew a trade mark?
The cost of renewal for UK trade marks is £200 for the first class of goods and services you seek protection, and £50 for any additional class. If you are applying to renew your trade mark in the 6 months after the expiry date there is a late renewal fee of £50.
For EU trade mark renewals, the fee is €850 for one class, €50 for the second class and €150 for any third or additional class. The fees must be paid in euros.
For an international trade mark renewal there is a basic fee of 653CHF for each designated Madrid System member and a supplementary fee of 100CHF for each class of goods and services in excess of three.
All fees mentioned do not include solicitors’ fees.
It’s important to note that you can reduce the number of classes at the time you renew or, in case of an international renewal application, you can reduce the number of countries designated where you seek protection.
How can I check the status of my trade mark renewal?
Once you have filed your renewal application at the IPO, you should receive an electronic receipt if you filed online or a paper receipt if you filed the renewal by post.
It may take the IPO a few weeks’ to process the renewal application. During this time, you cantrack the progress by searching the Trade Mark Register via the IPO website at https://www.gov.uk/search-for-trademark. You can search by registration number, trade mark name or owner name. The record for your trademark will then show if it has been renewed or not. You can also contact the IPO by telephone or email and quote your trade mark registration number, to ask whether they have an update yet.
What do I need to do after my trade mark has been renewed?
Once your trade mark has been renewed it should remain registered for another ten years, provided you take active steps to use and enforce your mark when necessary. You should diarise when the next renewal date is and set a reminder for six months’ prior to this to ensure that you file the next renewal request on time.
You should also schedule time to conduct regular reviews of your trade mark portfolio to check that you are still using the marks in the form that they are registered and for the same goods and services that the trade marks are registered for.
When your trade mark has been renewed, you can use the registered ® symbol again as is it a valid registered mark in the country for which the registration applies. This shows third parties that the mark is registered and can act as a deterrent against other businesses attempting to use a similar mark for identical or similar goods and services.
Summary
Trade marks have the potential to offer protection to critical aspects of your business’ brand identity. Correctly managing the renewals process can often extend this protection indefinitely, but the process can be complex and differs depending on which part of the world you need protection in. Our trade mark solicitors can help guide you through this process to ensure your brand is protected as best as possible, for as long as possible.
