Renewing your trade mark
After registration, a registered trade mark is in force for 10 years. At the 10 year mark, the trade mark owner can then opt to keep the trade mark active by paying the appropriate renewal fees. The trade mark renewal can be done every 10 years from the date of filing, indefinitely so long as the trade mark continues to be used as a trade mark.
Amending the trade mark prior to renewal
Prior to renewal, the trade mark registration can be amended. For example, the name(s) and/or address(es) of the applicant may change. Appropriate assignments of rights must be in place. You may also decide to reduce the number of classes of goods and services in the registration in order to avoid non-use disputes. Reducing the number of classes will also decrease trade mark renewal costs, which depend on the number of classes specified on the registration. Your trade mark attorney can file any permissible amendments through IP Australia.
When can the registration be renewed?
Renewal of trade mark registration can be conducted as early as 12 months before the renewal due date. You can still renew up to six months past the trade mark renewal date in Australia. However, additional fees for extension will be added to the renewal fees. Your trade mark attorney can help prevent any additional fees being incurred or lapsing of the registration by sending you timely reminders before a renewal is due.
After payment of the appropriate renewal fees, your trade mark attorney will notify you that the trade mark registration has been successfully renewed.
Consequences of non-renewal
Failure to renew a trade mark by the expiry date means that the trade mark will lose any rights and will be labeled lapsed. However, registration can be renewed within a six-month period after the renewal date. When this period has elapsed, the trade mark will be deleted from the Australian Trade Marks Register. Unless you can successfully get an extension of time, you may need to lodge a new application for the trade mark. Your trade mark attorney can advise you of your options should you miss a renewal deadline.
If your business has been actively gaining goodwill associated with the trade mark, a lapsed trade mark opens up a window for opportunistic trade mark filings by any competitors for a similar or identical trade mark in respect of the same goods and classes. Therefore, it is in your best interest to stay informed of the important dates in your trade mark’s time-line and to keep your registration up to date. The trade mark attorneys at Baxter IP will be able to help you maintain your trademark registration.