Trademark Renewal - Renewing and Maintaining a Trademark

by Kate Mcormack - Solicitor and Trademark Attorney

This guide sets out the procedures involved in renewing a trademark as well as some practical advice on maintaining a trademark.

Once you have a UK trademark registration, you can theoretically maintain it for life as long as you renew it every 10 years.

How To Renew a Trademark

Renewing a registration is easy and simply involves filling a form and sending this together with a renewal fee to the Intellectual Property Office. The renewal fee is currently set at £200, for a registration in 1 Class and £50 for each additional class. If you do not renew the registration within 6 months of the renewal date, the mark will expire and you will no longer own a registered mark unless to pay to have it restored within a further six months.

As the renewal reminder from the Intellectual Property Office will be sent to the address of the registrant or their agent as shown on the Register, it is important that you keep the Intellectual Property Office informed of any changes in address of the owner and/or agent over the years.

However, even before your registration is due to be renewed, there are other steps that you should take to protect it. This is because there are two ways in which a non-expired trademark registration may be cancelled:

1. Revocation of a Trademark

Anyone can apply to the Intellectual Property Office to have a trademark registration invalidated as from a particular date. There are set grounds upon which a registration can be revoked. These are:

Non-use of the mark

You must use your trademark for the goods and/or services in the registration within 5 years' of the registration date and within every five year period thereafter. If you cannot demonstrate use of the mark for some or al of the goods and services covered in such a period, it will be vulnerable to revocation for those goods/services.

The mark having become generic

If you do not use your registered mark carefully it may become synonymous for a certain type of product or service. So, instead of the public perceiving the name as applying to a product created by your business only, it is simply seen as the general name for that type of product or service. An example is the word Thermos for flask which was originally a registered trademark. To protect against this happening you should ensure that you always use the registered trademark symbol, R, after the name when referring to it in advertising and on your products. You may need to actively take action to prevent others, such as journalists, from using the trademark in a generic sense.

The mark having become misleading

As culture and language evolve over the years, a trademark which was once accurate may become misleading. An example is a trademark that contains a word that once described a quality of the goods or services but you have since changed the materials that the goods are made of. If this is the case, you may need to register an amended mark to ensure that your name is protected.

2. Invalidity of a Trademark

Anyone can apply to have a trademark registration invalidated as if it never existed. To do so, they must be able to show that the mark should not have been registered in the first place because it does not fulfil the requirements of the Trade Marks Act. This is the case if the mark is non-distinctive, descriptive or generic for the goods or services that it covers.

In addition, owners of registered or unregistered trademarks that are considered confusingly similar to your registered mark can apply on this additional ground to have your registration invalidated. Such owners can apply for invalidation even if they did not oppose your application when it was first registered, if they have good reasons for not having done so.

So just because you have secured a registered trademark does not mean that you can simply ignore it. Positive action is required to protect the registration and ensure that you gain as much as possible from your initial investment