- Forgotten to renew your trade mark?
Forgotten to renew your trade mark?
Forgotten to renew your trade mark?2nd July 2021 - Published by Kuits Intellectual Property Team
Renewal of trade marks
A trade mark is registered for 10 years from the date of registration, which in effect is the filing date. At the end of that period it can be renewed for a further period of ten years and so on indefinitely. The Intellectual Property Office (IPO) will send out a reminder 6 months prior to the renewal date. The renewal fee is £200 for the first class of goods or services that the trade mark is registered in and £50 for each additional class.
What if you have missed the renewal date?
If you have missed the renewal date the trade mark will show as “Expired” on the trade mark register. However, you can still renew your trade mark within the 6 month period following the renewal date, but an additional fee of £50 is payable.
If no application to renew is made in the period of 6 months following the renewal date, the trade mark will lapse and be removed from the Trade Marks Register. At this point, the only way to revive the trade mark is to apply to have it restored to the register. This can be done up to one year after the renewal date. The application must include a written statement explaining why the trade mark was not renewed on time and an additional fee of £100 is payable. It is for the applicant to prove that it intended to renew the mark.
The IPO will then decide whether to restore the mark to the register and renew the registration; it must be satisfied that the failure to renew was unintentional having regard to all the circumstances. The proprietor will not be refused restoration because of the failure of their appointed agent to ensure renewal.
The IPO will not notify those making applications for potentially conflicting trade marks about expired marks. This can cause difficulties if the mark is subsequently restored to the register and in the interim a conflicting mark is registered. If you consider that such a mark does conflict with your expired (and subsequently restored) mark, then once restored you can at that point seek to stop them using it. However, providing that the new mark was used in good faith, the owner would not be liable for infringement during the period from when the original mark expired until the date on which its restoration was published on the IPO’s website.
What you can do:
- In order to protect your trade marks, it is important to keep track of renewal dates.
- Ensure that the IPO and your Trade Mark Attorney, if you have used one to register your mark, is kept up to date with your current contact details so that you receive renewal reminders.
- Be aware that trade mark owners are often targeted by scammers sending letters or invoices asking for money to renew trade marks. You should be vigilant upon receipt of any renewal request to ensure that it is from the IPO. If you do receive a scam invoice you can send a copy to the IPO email@example.com .
Get in touch with a Trade Mark Solicitor today
If you have missed the renewal date for your trade mark and would like more advice on what you need to do, then please contact Trade Mark Solicitor Helen Harmel on 0161 838 7816 or email firstname.lastname@example.org.