6 Questions to Ask a Lawyer About Missed Trade Mark Deadlines
Angus
If you have missed a trade mark deadline, you may be wondering what to do next. In some cases, however, you can receive an extension and avoid losing your trade mark. If you have missed trade mark deadlines, this article will explore some of the key legal questions to ask before moving forward with a trade mark renewal.
1. Have I Taken Due Care?
The Commissioner may extend a deadline if you have exercised due care. You must file a request for an extension of time within two months of the circumstance that prevented you from reaching the deadline. In addition, this request for a time extension must be for no more than 12 months.
To demonstrate due care, you must show by proof in the form of a statutory declaration, that circumstances beyond your control meant you could not meet your deadlines. The official charge for this provision is AU$100, and other fees may apply.
2. What Happens If I Miss My Renewal Period?
After your trade mark expires, you will have a six-month grace period to pay. You can still renew your trade mark registration for another 10 years within this grace period. Your trade mark will no longer have any rights resulting from registration after the expiration date has passed. If you do not pay the renewal cost by the end of the six-month grace period, IP Australia will withdraw your trade mark from the register.
3. How Will I Know If IP Australia Renewed My Trade Mark?
The Registrar will tell you that your trade mark registration has been renewed. They will inform you of the renewal duration after your request for renewal has been received and processed. You may also use Australian Trade Mark Search to verify the status of your registration.
4. How Long Can I Extend the Time in the First 15 Months?
You can extend this timeframe by applying for a time extension. If done during the first six months following the initial 15 months, it can be done simply by writing a request and paying the necessary cost. This six-month term is sometimes called the easy extension period. During this period, the Registrar may offer free extensions. For example, this may happen because IP Australia issued a supplementary report late in response to a letter from the applicant or any other reason. However, such free extensions will not extend the easy extension period beyond the end of the 21-month period following the date of the first report on the application (or the date of the first adverse report raising new grounds for rejecting the application).
5. Can I Reduce the Amount of Classes That I Renew?
As your business or product line evolves, you may wish to lower the number of classes you initially registered as you utilise your trade mark. If you want to remove specific categories of products or services from your registration, you should do so at least three weeks before the actual renewal deadline. Otherwise, you may be unable to renew your trade mark using online services. This may require you to pay additional expenses.
6. Did I Receive a Valid Late Renewal Notice?
If you hold a registered intellectual property right, you may get letters concerning renewal or registration. These are letters that are not from IP Australia, and they usually concern international registration. When you apply for a trade mark, your information becomes public, and other organisations may approach you.
Regard letters from unknown organisations with care, especially communications seeking money for unwanted services. Whatever services the unknown organisation offers, they are not official IP Australia communications. Therefore, you do not need to pay their fees. Ensure that you only pay fees to IP Australia.
Key Takeaways
Before deciding to see a lawyer about your missed trade mark deadlines, you should consider first whether the late renewal notice is valid. Then, determine how long you have to lodge a renewal application and how many classes you want to renew your trade mark under. If you have any questions about what happens when your trade mark has expired, or you have missed a deadline, contact our experienced trade mark lawyers on 1300 657 423 or fill out the form on this page.
Frequently Asked Questions
The Registrar will tell you that your trade mark registration has been renewed and will inform you of the renewal duration after your request for renewal has been received and processed.
If you want to remove specific categories of products or services from your registration, you should do so at least three weeks before the actual renewal deadline.