Renewing a trademark is a vital step in retaining exclusive rights for using a trademark in Australia. Trademark renewal in Australia is controlled by the Trademarks Act 1995 and Trademarks Regulations 1995.
I. What is Trademark Renewal?
Trademark renewal is the procedure of extending the term of validity of a previously registered trademark. In Australia, a registered trademark is initially valid for ten years after filing the application and to maintain exclusive rights, the registration must be renewed at the end of every ten years. There is no limit to how many times a trademark registration can be renewed, so rights can be extended indefinitely if the renewal conditions are met.
II. Key Provisions for Trademark Renewal in Australia
Several key provisions under the Trademarks Act 1995 and related regulations govern the renewal process:
Initial Expiry Date and Renewal Period:
The initial expiry date for a trademark registration, including those claiming Convention priority, is ten years from the original filing date of the application (Section 72(3)). For registrations resulting from divisional applications, the filing date is the same as the parent application’s filing date.
Renewal Term:
Upon renewal, the trademark registration is extended for another ten years from the date the registration would have expired if not renewed (Section 77).
Request for Renewal:
A renewal request can be submitted at any time within the twelve months prior to the registration’s expiry date (Regulation 7.3). If a renewal request is not received by the Registrar two months before the expiry date, the Registrar must notify the registered owner, indicating the renewal due date and the fee payable (Section 76 and Regulation 7.4). The notice also includes information about late fees if the renewal application is submitted after the expiry date.
Late Renewal:
Trademark renewal is still possible up to six months after the expiry date (Section 79), subject to the payment of a late fee. The late fee is calculated for each month after the expiry date and depends on the timing of the late renewal request (Section 75). Even if renewed late, the registration is extended for ten years from the original expiry date.
Effect of Non-Renewal:
If a trademark is not renewed, it ceases to have legal effect after the expiry date. The Registrar will remove the trademark from the register six months after the expiry date if it has not been renewed (Section 78). Between expiry and removal, the trademark is still cited against any new registration applications under (Section 44).
Restrictions on Infringement Claims During Lapsed Period:
(Section 128) prohibits any action for infringement for acts that occurred between the expiration of the registration and the subsequent renewal. This provision protects third parties who may have used the trademark in the intervening period without knowledge of its renewal status.
III. Renewal Procedure
The renewal of a trademark in Australia involves several steps:
Request for Renewal:
The owner or any authorized person must submit a renewal request to IP Australia in the approved form, along with the prescribed fee. The request must be made within the twelve months preceding the expiry date. If the renewal request is not received two months before the expiry date, IP Australia sends a reminder notice to the owner, which specifies the due date and applicable fees, including potential late fees.
Late Renewal:
If a trademark is not renewed by its expiry date, a late renewal request can be submitted within six months of the expiry date. The application must include the standard renewal fee, plus the late fee calculated for each month after the expiry date.
Confirmation of Renewal:
Once the renewal request is received and processed by IP Australia, the Registrar will issue a notice confirming the renewal of the trademark and specifying the period for which it has been renewed (section 77(2) and Regulation 7.5).
IV. Consequences of non-renewal
Failure to renew a trademark has significant consequences:
Loss of Rights:
If a trademark registration is not renewed within six months of its expiry, it will be removed from the register. The trademark owner loses exclusive rights to use the mark in connection with the goods or services for which it was registered.
Impact on Infringement Actions:
Once a trademark registration expires, the owner cannot bring an infringement action for any unauthorized use that occurred during the period after the expiry and before any subsequent renewal (Section 128).
Relevance in New Applications:
During the six-month period after expiry, while the registration is still pending removal, it may continue to be cited against new trademark applications under (Section 44). After six months, if not renewed, the trademark loses this protection.
V. Strategic Considerations for Trademark Renewal
Maintaining a registered trademark in Australia requires strategic planning:
Monitoring Renewal Deadlines:
Trademark owners should maintain a docketing system to track renewal deadlines, including the final date for late renewal. This ensures timely renewal and avoids the risk of losing exclusive rights due to administrative oversight.
Proactive Renewal Management:
It’s advisable to initiate the renewal process well before the expiry date to avoid the imposition of late fees and potential legal complications. Starting early also allows sufficient time to address any unforeseen issues, such as changes in ownership or errors in the register.
Leveraging Renewal for Strategic Branding:
Renewing a trademark provides an opportunity to review the portfolio and ensure that it aligns with the current and future business strategy. Trademark owners can use this renewal period to assess market trends, expand protection to new categories, or consider filing additional applications in new jurisdictions.
VI. Conclusion
Renewing a trademark is essential for maintaining exclusive rights and protecting brand identity in Australia. The renewal process is straightforward but requires adherence to specific deadlines and procedural requirements. Trademark owners must be vigilant in tracking renewal dates and managing their portfolios strategically to avoid loss of rights and potential legal challenges. By following the guidelines set forth in the Trademarks Act 1995 and Trademarks Regulations 1995 and staying proactive in managing trademark renewals, businesses can ensure their trademarks remain a valuable asset in their overall brand strategy.
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