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    Why trademark renewal is a fundamental process

    The process of trademark renewal does not take place frequently. However, it is one of the most important activities for a business to carry out to ensure that their intellectual property is protected. It is undoubtedly a time-consuming and sometimes burdensome process that requires attention to detail and consistent monitoring.

    Depending on the scale of a business, trademark renewals may also pose challenges, such as renewals within different territories. This requires specialist international knowledge of IP rights and renewal processes in these territories, so that the relevant documents are correctly prepared and filed within the appropriate deadlines. Whilst the renewal process is not frequent, it does require a considerable amount of resources to ensure that a business protects its intellectual property from competitors.

    How long does a trademark renewal last?

     

    Trademarks are generally valid for 10 years with a possibility to renew every 10 years. Once a trademark is renewed, a certificate of renewal is issued to the trademark owner.

    Renewal periods can differ depending on the country or territories in which the trademark is held. For instance, in Canada, a trademark registration is valid for 15 years and it can be renewed every 15 years; it can also be cancelled, if the owner has not used the trademark within the first 3 years of registration.

    How to file a trademark renewal

    How to file a trademark renewalWhile there are slight differences between certain countries, the documentation requirements for renewals are similar in most territories. Firstly, the applicant will need a renewal document, which is usually a simple form. This document is different between countries and territories and it will need to be obtained from the relevant application office.

    In order to complete the form, the applicant may also need information about the trademark, such as the trademark number, the Nice classes, the trademark owner details as well as other information that can generally be found in the original application documentation. Additional supporting documentation may be required, depending on the region in which the renewal takes place. For example, in the UK, a supporting fee document must also be filed, which outlines the forms you are submitting and their associated fees.

    Even though the documentation and application requirements are relatively similar, the difference in renewal fees can vary greatly between different regions, such as the EU, the US and the UK. Additionally, the late filing fees can also be significantly higher for certain territories. Although the fees and surcharges are different from one territory to another, all territories charge for renewals on a per class basis. The differences in filing requirements between countries and regions can significantly impact the IP rights of a trademark owner, depending on the region in which they conduct business. For this reason, trademark owners that conduct their business internationally will consult with IP specialists to avail of tools, resources and knowledge that ensure their IP is effectively protected across all regions of business.

     

    What to do if you forget to renew a trademark

    What to do if you forget to renew a trademark

    There is generally a six-month grace period following the expiry of a trademark. During this time, the trademark can still be renewed. However, this will usually result in a surcharge that can differ depending on the territory.

    In the EU, there is a 25% late fee that is added to renewal fees. If a trademark is not renewed within the 6-month grace period, it will be automatically marked as expired in the EU Trademark (EUTM) register effective from two weeks after the grace period ends. In the US, a late fee of US$200 is charged per class of goods or services in addition to the renewal filing fee. Late fees differ between countries and regions, so it’s worth consulting the appropriate trademark office for more information.

     

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    Trademark renewal rules in the EU

    Trademark renewal rules in the EU

    In the EU, the renewal process is generally straightforward. The EU International Patent Office (EUIPO) will send a reminder to the trademark owner six months before it expires. At this point, a legal representative for the business will assess the trademark and determine if any updates are required. Then, a renewal request form can be filed online. The renewal will be effective from the date following the expiry of the initial registration. A renewal confirmation will also be provided in writing to the owner a few days after the initial trademark expires.

    When an EU trademark is due for renewal, a business can opt to convert their EU trademark rather than renew it. This means that the trademark will only be valid within certain EU member states. If a business wants to carry out a conversion, it must be filed within 3 months following the expiry of the trademark. An EU trademark may also be partially renewed, for example, if an owner seeks only to renew certain classes.

    Trademark renewal rules in the US

    Trademark renewal rules in the USThere are several differences between renewals in the US versus other territories. The first of which is that a trademark owner must provide proof of use for their trademark. This is an affidavit or Statement of Use (SOU) that states the use of the trademark in commerce. The trademark owner must provide this even before the renewal, approximately six years after the initial trademark registration. However, this must also be provided with each renewal. A proof of use is not uncommon in other countries and regions. Trademark owners should seek information from the relevant trademark office regarding the timeline for using their trademark.

    One of the most important differences between the US and the EU renewal rules is that the US does not send a reminder about an upcoming renewal. For this reason, it’s important to ensure that filing deadlines are carefully managed to ensure that they are not missed.
    In the US, a trademark can also be registered either on a federal or a state level. A federal registration allows the trademark to be used in interstate or international commerce. A state registration means the trademark can only be used within the state in which it is registered. In addition to assessing the classes, owner details, and other updates that may be required for a renewal, a US business must also review their current or future business activities and determine whether they are an in-state or interstate business.

    For example, if a business sells goods or services through a website with an in-state trademark registration, it can only provide those goods and services within the state where the trademark is registered. If that business wants to expand into other states or internationally, it will require a federal trademark registration.

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    Trademark renewal rules in other countries

    Trademark renewal rules in other countries

    For the most part, trademark renewal rules are similar to the US and EU systems. Renewals will generally occur every 10 years, except in the case of Canada, which is every 15 years.

    The key differences will usually be found in:

    • Fees 
    • Renewal registration periods

    As previously mentioned, renewal fees can be vary between countries and regions. They can also vary depending on the number of classes to be renewed. Fees for applications and renewals are on the rise in certain regions, such as the US. However, there are sometimes reductions in application and renewal fees, such as the 50% reduction in trademark fees announced by the Chinese Ministry of Finance in 2017, which reduced renewal fees from RMB 2000 to RMB 1000 (approx. US$290 to US$145).

    The registration periods for renewals can be quite different between countries and regions. For instance, in countries such as China, the UAE and Australia, a renewal must be filed within 12 months before the trademark expires. However, in Cuba and South Africa, a renewal should be filed within 6 months before the expiry date. This is arguably the most important information to keep track of when it comes to trademark renewal filings to ensure that renewals are filed promptly, deadlines are not missed, and trademarks remain protected.

    Understanding the process and requirements for trademark renewals in various countries and regions can present many challenges for IP owners. Depending on its scale and reach, a business may need to manage renewals for a wide range of IP assets across multiple jurisdictions. In order to effectively protect these assets in a cost-effective way, it is advisable to work with an IP specialist that can provide the tools and resources to ensure adequate care is taken throughout the renewal process.