My Trade Mark Is About to Expire. Should I Renew It?
Is it coming up on ten years since you first registered your trade mark? Have you received a letter from IP Australia reminding you to renew your trade mark? Fortunately, you can renew a trade mark registration as many times as you like. Anyone can pay the renewal fee. Once IP Australia processes the payment, the renewal is effective. This article will discuss the steps you should take when deciding whether to renew your trade mark.
How Long Does Trade Mark Registration Last for?
In Australia, trade mark registration usually lasts ten years. However, there is a six month grace period after the date your registration expires in which to renew your trademark. During this grace period, you may still renew the registration of your trade mark for a further ten years by paying the renewal fee plus any applicable extension fees.
Once the expiry date has passed, your trade mark will no longer have the benefit of any rights arising from registration. At the end of the six-month grace period, if you have not paid your renewal fee, your trade mark will be removed from the register. At this point, it cannot be restored. This can have major consequences for your business.
When Can I Pay Renewal Fees?
You can pay renewal fees:
- at any time from twelve months before the renewal due date; or
- up to six months from the date of expiry.
You will need to pay higher fees if the renewal is after the expiry date. When renewing your trade mark, you can use IP Australia’s online service portal to pay your fees and renew your trade mark. Fees are set out in the table below.
|Action||Online services fee||Fee for paper lodgement|
|Renewal of a trade mark in a single class||$400||$450|
|Renewal of a trade mark in each additional class||$400||$450|
|Late renewal requested inside six months of renewal date||$100 for each month or partial month later than the expiry date||$100 for each month or partial month later than the expiry date|
How Will I Know if My Trade Mark Has Been Renewed?
When your request for renewal is received and actioned, IP Australia will let you know that your trade mark registration has been renewed and will advise you of the new renewal period.
If you have an online account, you can also check the status of your registration through Australian Trade Mark Search.
For example, say you receive a notice from IP Australia reminding you to renew your trade mark. You forget to renew your trade mark before the expiry date. The six month grace period allows you to make a renewal application after the expiry date, but you will need to pay $100 for each month or partial month that you are late. You end up paying online three months late, so pay $700.
What Trade Mark Registration Protects
Maintaining valid registration of your trade mark protects your intellectual property in your good or service that are fundamental to your business. It is very important.
While you have an active registration, nobody else can legally use your trademark. This prevents the need to engage in costly and time consuming legal disputes if your trade mark expires and is subsequently registered by another party.
What Happens if You Do Not Renew
If you do not renew your trade mark, you run the risk of someone else registering your trade mark. However, there are options for lodging out of time renewals. You may decide to:
- lodge a late application within six months of the expiry date;
- lodge a new application; or
- apply for an exemption to lodge a late application.
In addition to the above administrative burden, there could be major business implications of failing to renew your trade mark on time. For example, if you have franchising or licensing agreements that allow third parties to use your trade marks, you may find yourself in breach of licensing or franchising agreements by not maintaining registration.
Why You Should Seek Professional Advice
If you are out of time and you need to maintain your trade mark, you should seek the help of an IP lawyer. If you try to renew the trade mark yourself, there are lower chances of success and the consequences of failure can be severe. You could:
- lose the right to use your trade mark; or
- end up having to license the use of the trade mark from a third party.
It is important to maintain valid registration of your trade mark in order to avoid costly disputes to prove your right to use it. Additionally, it is worth critically assessing whether you still need to maintain the trade mark you registered ten years ago. If your business is now operating in a whole new industry and you have stopped providing the original good or service, renewal may be a waste of time and money. If you have any questions about renewing your trade mark, contact our experienced trade mark lawyers on 1300 657 423 or fill out the form on this page.
Frequently Asked Questions
You can renew your trade mark up to 12 months before it expires.
You have a six month grace period after your trade mark expires to renew your trade mark. However, you will have to pay additional fees in order to renew your trade mark out of time.
IP Australia will send you a renewal notice letting you know that your trade mark is going to expire and provide you options to pay the renewal fee.
Trade mark registration lasts ten years from the date of original registration.