The term of protection for registered trademarks is 10 years, though indefinite protection can be achieved if the mark is renewed every decade.
Lateness in filing this renewal can cause many complications for the owner, ranging from increased fees to losing protection of the mark altogether. An exploration of these risks should highlight the importance of ensuring you file your trademark renewal on time.
Loss of protection altogether is the most serious repercussion of failing to file your trademark renewal on time. There are two main ways in which this risk of total loss can occur.
Someone else may take the trademark
Although a rare occurrence, it may be the case that, where trademark protection has lapsed, a competitor will snap up the mark and register it or a very similar mark as their own.
Although marks which are identical or similar to pre-existing trademarks are not registrable, once a mark is no longer registered, identical or similar marks are theoretically permitted. Provided that no other forms of pre-existing rights are interfered with in the competitor’s registration of the mark, it will not be refused.
This therefore leaves the possibility of losing your trademark to a competitor if you miss the renewal.
Trademark re-registration may not be allowed
The mark may also be lost altogether if, after failing to renew and looking to re-register, a similar mark has been registered in the meantime. As per EUIPO guidelines, a mark will be denied registration if it is similar to an already registered mark or interferes with existing rights.
If no such issues existed whilst the mark was registered but have arisen since the date for renewal has passed, then any attempts to re-register the mark will be denied.
As well as running the risk of losing the mark altogether, missing your trademark renewal risks weakening the parameters of the protection it receives if re-registration is later sought.
If a mark similar to yours has since been registered in the Nice classes that your mark was originally registered in, re-registration in these classes will be denied.
As per EUIPO requirements, if a mark seeks registration with regards to goods where a similar mark is already registered then registration will be refused. Therefore, missing your renewal date may mean that, if you seek to re-register the mark at a later date, the goodsor services against which you can use the mark may be limited.
Similarly, if protection has lapsed in multiple countries and a new similar or identical mark has been registered in some of these countries, then a later re-registration may be limited geographically too.
This inability to re-register your mark in certain countries can significantly hinder business prospects and profits.
As well as risking the limitation or discontinuation of trademark protection, failure to renew can also be costly, regardless of the above issues with re-registration.
Agreements with competitors
If any of the above risks have been realised, it may be possible to enter into agreements with the competitors in question in order to maximise the protection available to your mark. Such agreements would likely strike the balance between maximising the potential of both yours and your competitor’s marks in exchange for financial or other appeasements.
However, such agreements are likely to be costly and difficult to strike, and thus represent another hurdle encountered by owners who miss their trademark renewal.
Late trademark renewal fees
Regardless of whether any of the aforementioned potential issues have yet been encountered, owners who delay their trademark renewal will definitely encounter additional costs in the form of late fees.
Generally, after the renewal date, national IP offices give a 6 month grace period in which the renewal can still be filed. However, waiting until such a time will incur greater official charges than filing the renewal on time.
Additional agent fees
More than just a risk, requiring further legal assistance is a direct consequence of owners missing their renewal date. Such assistance is required either to navigate the delayed renewal and payment of late fees, to draft agreements with competitors, or in the troubles which doubtlessly ensue if some or all of your trademark protections are lost.
This additional assistance comes at greater financial cost to the owner, therefore owners who neglect to file their renewal on time not only risk the aforementioned repercussions, but also their associated costs.