Trademark Renewal

The renewal window and what follows it

• Renewal may be filed within one year before the registration expires
• A late renewal is possible within six months after expiry, on payment of a surcharge
• After that the mark may be removed from the register
• A removed mark can be restored by application within one year of removal, with a further fee
• Beyond that window the mark is gone and must be applied for afresh, with no guarantee it is still available

What lapsing actually costs you

While a registration is lapsed you lose the statutory rights that come with it — the presumption of validity, the ability to sue for infringement rather than passing off, and the right to use the ® symbol.

The real danger is that a third party files for the same mark in the interval. Your prior use gives you arguments, but you are then fighting from a much weaker position than simply holding a live registration would have given you.

Worth reviewing at renewal

• Whether the proprietor’s name and address on the register are still correct
• Whether the mark is still in use as registered, since non-use for five years exposes it to rectification
• Whether your business has extended into classes the registration does not cover
• Whether the mark as used has drifted from the mark as registered
• Whether any assignments or licences need to be recorded

How we handle it

1. 1 Verifying the record We pull the registry record to confirm the expiry date, the classes covered and the proprietor details.
2. 2 Reviewing coverage We check whether your current business is still covered by the classes registered, and flag any gap.
3. 3 Filing the renewal The renewal application is filed with the prescribed fee, within the window before expiry.
4. 4 Correcting the record Where the proprietor name or address has changed, the amendment is filed alongside so future notices reach you.
5. 5 Confirmation The renewal is recorded and the confirmation sent to you, with the next renewal date noted.

Frequently asked questions