Knowing of the lifespan you trademark is crucial to considering the protection of your businesses intellectual property and what challenges it may face. So just how long can a trademark be registered? Can it be opposed after being successfully applied for? How do registration disputes play out? This article looks to answer these questions around the duration of a trademarks validity.
When does trademark registration expire?
After registration, trademarks typically last for ten years. Once this period has elapsed a trademark must be renewed, or the trademark will become unregistered. Registration, both initially and upon renewal, will cost $740. This means that a trademark can technically remain registered indefinitely if the owner continues to pay the fee when registration is due.
Trademarks registered internationally also have varying lifespans. The registration period also lasts for ten years in main market jurisdictions such as the United States, China and South. In New Zealand, it lasts for five.
What is an unregistered trademark?
The key distinction between a registered and unregistered trademark is that of security. This is because while unregistered trademarks may still be recognised as intellectual property, they are not afforded the same protection as registered ones. Namely, registered trademarks enjoy the protection of
If a business decides against registering a trademark, they run the considerable risk of having a competitor copy the same trademark and with it the work and time that went into designing and applying for it.
What are the grounds and process for challenging a trademark?
Although a trademark is registered for ten years, it may be contested early on in this period.
A trademark opposition starts with the opposing party lodging a notice of intention to oppose to inform the registering party. Various filing fees apply to lodge this, and it has to be put in within two months of the trademark being advertised as accepted.
This document is later accompanied by a statement of grounds and particulars which outline supporting evidence as to why there is opposition to a trademark. A statement of grounds and particulars can be filed free of charge. It must be filed one month after a notice of intention to inform.
A time extension for both of these documents can be applied for provided there has been an error or omission made, or something has occurred beyond the control of the filing party.
A cooling off period may also be requested to allow parties to mediate the dispute. The length of this period is six months, with the option to extend it for a further six months at the decision of both parties. At the end of this period, the opposition resumes and the proceeding goes ahead.
How do you respond to a trademark opposition?
In response to a statement of grounds and particulars, the defending party must lodge a notice of intention to defend document with Intellectual Property Australia. There is no fee attached to this, however, it must be submitted within a month of receiving a statement of grounds and particulars.
If the defending party cannot make that deadline, they may apply for an extension under the Trade Marks Act 1995, with the relevant extension fee being charged.
It is important to take steps towards registering and renewing a trademark every ten years to ensure that your brand integrity remains intact and is less exposed to the competitor risks. In doing this, the substantial risks of unregistered trademark over a registered trademark should also be noted. Knowledge of how to respond to a trademark opposition is also particularly valuable. Want further information about the life of a trademark? Call one of LegalVisions lawyers on 1300 544 755