What Happens When a Trade Mark Expires?
Emily Young
Protecting your intellectual property (IP) is essential to the success of your business. Having a trade mark is one way to do this, as it gives you exclusive rights to the use and commercialisation of your trade mark. The importance of trade marks cannot be overlooked and this extends to the renewal of your trade marks. Failure to renew your trade mark will result in its expiration. This article will take you through what happens when a trade mark expires and your options to restore your trade mark rights.
How Long Do Trade Marks Last?
In Australia, trade mark registration lasts for ten years. Before the ten year period is up, IP Australia will send you information about how you can renew your trade mark, including how to pay the renewal fees. This makes it important to keep your information up to date with IP Australia. If you do not respond to IP Australia, your trade mark will expire.
What Happens When a Trade Mark Expires?
If your trade mark expires but you still wish to keep your exclusive right to its use, you have a six month period in which you can restore it. After that, you must pay the trade mark renewal fees and the additional extension fees.
Note that this has potential downsides. While your trade mark will remain viewable on the trade mark register for these six months, you will not be able to benefit from any of your rights, including the right to enforce your trade mark.
If you take no action six months after the expiry date, your trade mark will be removed from the register. Accordingly, you cannot restore your rights. Instead, you must make an entirely new trade mark application.
What Next?
Several difficulties arise from expired trade marks. Three of these are outlined in the following table.
| Continued Use | If you continue to use your trade mark when it has expired, you may find yourself part of a trade mark dispute. This is because others are eligible to register your trade mark if you let it lapse. If this occurs and you are still using your trade mark, you will find it difficult to prove that someone is infringing your trade mark rights. |
| Re-Applying | Another key difficulty with trade mark expiry is with re-applying for your rights. If you wish to apply for your trade mark again, the outcome is not guaranteed to fall in your favour. For example, if a competitor has applied for a trade mark in the interim, your application will not have any privileges, despite you previously having the registration. |
| Filing Date | Applying for your trade mark again comes with its own issues. The registration process takes months, during which your trade mark rights reset from the new filing date, as opposed to the date you filed your original trade mark. In instances of trade mark infringement claims, this puts you at a significant disadvantage. |
Ongoing Trade Mark Use
It is not essential for you to register your trade mark. Likewise, you still retain some rights to your trade mark even without registration. For example, if someone applies for a trade mark similar to yours but yours is not registered at the time, it can be difficult to demonstrate that you have rights to your trade mark. However, you may be able to provide evidence of ongoing use of your trade mark. This will enable you to still re-register your trade mark. While it will not ‘undo’ the other trade mark, it means that you still may have options.
Key Takeaways
If you wish to keep your trade mark, allowing it to expire can be detrimental. Ultimately, it is in your best interests to ensure you renew your trade marks on time and avoid having to reapply for them. Some of the difficulties that arise from expired trade marks include:
- potential infringement disputes;
- not being guaranteed you trade mark rights; and
- receiving a new filing date.
If you need assistance with registering or renewing your trade mark, contact our experienced IP lawyers on 1300 657 423.
Frequently Asked Questions
In Australia, trade mark registration lasts for 10 years. After this time, you will need to renew your trade mark or it will expire. IP Australia will send you information about how you can renew your trade mark before the expiry date, making it important that you keep your information up to date with IP Australia.
If your trade mark expires but you still wish to keep your exclusive right to its use, you have a six month period in which you can restore it. However, after this period, your trade mark will be removed from the trade mark register and you will not be able to restore your rights. Instead, you would be required to make an entirely new trade mark application if you wanted to keep your rights.