What Is The Ideal Trademark Renewal Timeline?

With trademark protection lasting only 10 years, renewing your registration is the only way to ensure your IP's continuous and indefinite protection. If the trademark renewal period is approaching, you may wonder when the best time is to renew your trademark and what considerations should inform your decision. Here we discuss the ideal trademark renewal timeline and offer advice on managing the process effectively.

Brand owners often ask us when they should start the process of renewing their trademarks. Although the best advice is to seek the counsel of a trademark attorney¹, here we will provide some answers to common questions about the trademark renewal time period and process, as well as reasons for renewing a trademark at different times.

What is the time period for trademark renewals?

Using the European Union Intellectual Property Office (EUIPO) as an example, owners—or their legal representatives—are notified six months before their term's expiry date that a trademark renewal is due. This letter provides a prompt to complete the renewal paperwork, which—ideally—will be filed within six months before the expiry of the term.

For those that miss this deadline, there is a grace period after the expiry date within which a renewal can still be filed and remain effective. For the EUIPO, this grace period is six months from the expiry date; any renewals filed after this final six-month period will not be acknowledged, and the trademark will be abandoned.

This means that, in the case of EU trademarks and many territorial trademarks, there is a total of 12 months within which a renewal can be filed. This begs the question, therefore, when is the right time to renew a trademark?

Trademark Renewal Timelines

Option 1: Trademark renewal before the expiry date

• Before the expiry date is often the best time for renewing a trademark, as there is no chance of a lapse in protection: If the renewal is left until the grace period, there is a risk that unforeseen delays could push a trademark renewal outside of the final time period. In the absence of valid reasons for doing otherwise, most brand owners will file a trademark renewal as soon as notification is received from the IP office.
  
• Renewing a trademark before the expiry is also cheaper than waiting until the grace period. If renewal is left until the second half of the potential 12-month period, you will be charged late fees on top of the usual fees for filing your renewal. Late fees vary by jurisdiction, but, as an example, the EUIPO fee is an additional 25% on top of the usual renewal fee.
  

Option 2: Trademark renewal after the expiry date

• You can file for renewal after the expiry date, so long as you pay the additional charges. For example, a brand owner may wish to wait until the grace period because they have multiple trademarks expiring in the same year and wish to file all their renewals at the same time to ease the process.
  
• If you have more than one trademark to renew and wish to delay some renewals until the six-month grace period so they fall in line with other renewals, then that is reasonable. Otherwise, it is not advisable to wait until after the expiry date to just put off the task, as doing so will result in unnecessary additional expenses and incur undue risks.
  
• However, it must be noted that delaying the renewal does not alter the expiry date at the end of the following decade: the 10-year intervals for which trademarks are registered are counted from the date of application. Waiting until the grace period will not lengthen the term of protection.

As these options and considerations show, the best timeline for renewing a trademark depends on your individual circumstances. If you have more than one impending renewal, it may prove easier to delay some renewals, potentially until the grace period, to file all relevant renewals at the same time.

If not, you should consider renewing your trademark as soon as possible after notification from the relevant IP office (or your trademark renewal provider) to avoid running the risk of unnecessary costs and potentially disastrous delays.

Footnote

1. Questel does not provide any legal services. Legal services are provided by independent IP attorneys on the basis of a separate engagement agreement between you and, if you wish to, a partner IP attorney firm.