Questions to Ask Yourself Before Renewing Your Trade Mark Application

George Raptis

• 16 June 2021
• 7 April 2022
• 5 min read

Has it been 10 years since you registered your trade mark with IP Australia? If so, it is time to consider renewing your trade mark registration. By renewing your trade mark registration, you can enjoy a further 10 years of protection and maintain your exclusive right to use, licence and sell your mark. Whilst there is no limit to the number of times you can renew a registered trade mark, you should consider the following questions given the costs involved in renewing your registration. 

Is Your Trade Mark Still Useful?

You should consider whether your trade mark is still representative of your business’ brand before renewing it. Trade marks are a form of intellectual property that can comprise a name, sign or phrase that many consumers recognise as part of your business brand. However, since your brand is likely to change over a 10 year period, you should consider whether your trade mark is still useful. Consider the following example.

Trade Mark Classes

Say you own a bookstore that you have partly converted into a cafe. Under your original trade mark application that protects your bookstore logo, you have only included class 35, which covers the retail of books and other related goods. However, since you opened a cafe, you might need to include an additional class that covers hospitality services. In this instance, you might need to reconsider whether to file an entirely new trade mark application that adequately protects your new business model and covers your additional services.

On the other hand, you might want to reduce the number of classes you originally covered in your trade mark registration. To use a similar example, you might have begun operating as a bookstore and cafe but decided only to maintain the bookselling part of your business. Where your trade mark application covered both classes of services, you might request the deletion of a class relating to the hospitality services. You should file such a request at least three weeks before the due date of your renewal.

Not Using Your Trade Mark

You should be aware that a third party can apply to remove your trade mark if you have not used it. This is to prevent crowding caused by unused trade marks, blocking other parties from registering them. Therefore, you should bear in mind that if you have not regularly used your trade mark, you should consider whether it is worth renewing it as it may be vulnerable to removal by a third party regardless. 

Are You Renewing Your Trade Mark on Time?

When it comes to renewing your trade mark, you should ensure that you renew it on time. Trade mark registrations are valid for 10 years from your filing date. If you renew your application on time, you must pay a $400 fee to IP Australia. Notably, you can pay your renewal fee 12 months before your trade mark’s expiry date. If you wish to renew your application, but your trade mark registration has expired, there is a grace period six months after the expiration in which you may renew your registration.

If you miss the initial renewal date and renew your registration during the grace period, you will need to pay an extra fee on top of your renewal fees to IP Australia. To avoid this, you should clarify your renewal date by confirming your trade mark filing date. If you are unsure how to do this, feel free to contact one of our lawyers.

Is Your Renewal Notice Valid?

Frequently, unofficial organisations scam trade mark owners with false renewal notices. Since the trade marks register is publicly available, scammers can find trade mark owners whose applications are due for renewal. Often, these scams will demand fees for renewal that are significantly higher than IP Australia’s actual fees.

To avoid falling victim to these scams, you should ensure that you only respond to notices that IP Australia sends. You should remember that IP Australia will generally only contact you using the means you selected when you made your initial trade mark application. If you believe that you have been sent a false invoice, you can get in contact with IP Australia to confirm what you need to pay. Additionally, you can report scamming behaviour by sending copies of any trade mark scams to IP Australia via their Unsolicited Correspondence Inbox. This way, you can help protect other trade mark owners from potential scams too.

Key Takeaways

Before renewing your trade mark application, you should consider whether:

• your trade mark is useful for your business;
• you will apply for a renewal on time; and
• your renewal notice is valid.

If you need help renewing your trade mark, our experienced trade mark lawyers would be happy to assist. Call us on 1300 657 423. 

Frequently Asked Questions