How a missed trade mark renewal led to a legal battle with L’Oréal

A salon owner's recent legal battle with beauty giant L'Oréal over the renewal of her salon's trade mark is an important reminder of the importance of renewing your trade mark on time.

Rebecca Dowdeswell, a business owner from Leicester, missed the deadline to renew her business's trade mark. When she reapplied for the trade mark, L'Oréal opposed the trade mark application, alleging that the nkd brand name was confusingly similar to their NAKED line of beauty products.

Rebecca says she has spent over £30,000 in legal costs to contest the trade mark opposition made by L'Oréal. The amount of money spent in legal costs underlines how important it is to document and schedule in trade mark renewals way ahead of time.

In the UK, trade marks need to be renewed every 10 years. As long as you renew your trade mark and pay the associated fees you there is no limit to the number of times you can renew your trade mark. You can renew a trade mark up to 6 months in advance of the renewal date, although the Intellectual Property Office (IPO) does allow a six-month grace period for renewal, starting from the renewal date. If you do renew the trade mark after the renewal date you will have to pay an additional fee. It's important to keep the timeframes in mind and take action to renew your trade mark. If you miss this window, you could lose your trade mark rights, which might allow others to register similar trade marks.

There are practical steps you can take to make sure that you do not forget to renew your trade mark on time. You can set up reminders using calendar alerts up to 6 months before the renewal deadline, so you can start the renewal process well ahead of time. Keeping organised records of trade mark registration and renewal documents is also important to track renewal dates easily. Alternatively, you can outsource the process and a trade mark lawyer can manage your trade mark portfolio on your behalf.

Ben Evans, Head of Trade Marks at Harper James commented:

This case illustrates the importance of proper management and maintenance of your trade mark portfolio. Businesses often think that once their trade mark is registered then the job is done but that’s not the case. Trade mark portfolios need to be effectively managed to ensure that the right mark is registered for the right goods/services in the right territories, that renewal/statement of use deadlines are recorded and acted upon and that conflicting later applications are monitored, flagged and acted upon where appropriate. Engaging trade mark lawyers is a great way of ensuring that everything is being done properly and that your business’ most important assets are being looked after.