7 Risks If You Miss A Trademark Renewal

Does a trademark expire? What is the trademark renewal time period in most jurisdictions? And, what happens if you miss the trademark renewal deadline? Find the answers to all these questions and more in our guide to the seven main risks of forgetting to renew trademark rights.

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 highlights the importance of filing  trademark renewals on time.

7 Major Risks of Missing a Trademark Renewal

1-2. Loss of Protection

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 that 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 interfere with the competitor's registration of the mark, it will not be refused.

This raises 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.

3. Limited Classes

If a mark similar to yours has since been registered in the same Nice classes as your original mark, re-registration in these classes will be denied.

As per EUIPO requirements, if a mark seeks registration for goods/services for which a similar mark has already been registered, 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 goods or services against which you can use the mark may be limited.

4. Limited Countries

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 also be limited geographically.

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.

5. Agreements with Competitors

If any of the above risks come into being, it may be possible to enter into agreements with the competitors in question in order to maximize the protection available to your mark. Such co-existence agreements would likely strike a balance between maximizing the potential of both your 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 a trademark renewal.

6. Late 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.

After the renewal date, many national IP offices provide a six-month 'grace' period in which the renewal can still be filed. However, waiting until this time will incur bigger official charges than filing the renewal on time.

7. Additional Agent Fees

More than just a risk, requiring further legal assistance is a direct consequence of owners missing a renewal date. Such assistance is required either to navigate the delayed renewal and payment of late fees, to draft agreements with competitors, or to provide advice or support if some or all of your trademark protections are lost.

This additional assistance comes at financial cost; therefore, trademark owners who neglect to file renewals on time not only risk the aforementioned repercussions but also the associated costs.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.