Renewals And Maintenance Flashcards
Where are renewals typically filed?
Directly I.e at relevant Intellectual Property Office (UKIPO, EUIPO, WIPO)
For most overseas countries would instruct local agents or specialist renewal providers to handle renewals
May need a POA (may need to be notarized/legalised)
Also often at renewal time, change of name/address might be recorded
How do UK TM renewals work?
Due 10 years from filing and every 10 years thereafter
Renewal can be applied for 6 months before renewal date
Grace period 6 months (will incur late fines)
Typically renewed online (multiple renewals allowed)/ or Form TM11
Fees for UK TM Renewals
£200 for first class of goods or services
£50 for each extra class
Extra £50 if applying in grace period
If owner is no longer interested in a class(es) then it is easy to drop/exclude from renewal request
How does restoration work for UK TM’s?
If UK TM is not renewed in time/in grace period then mark is removed from the Register and removal is published
Then additional 6 months in which to apply for registration of the mark
Form TM13 (only paper) - must provide a statement fully explaining why mark was not renewed
Not an automatic right/needs to be justified
How do UK TM mergers work?
You can merge UK TM registrations together into a single registration
Form TM17 (no fee), application should be sent 1 month before renewal
Requirements
1. All trademarks must be registered
2. Trademarks must be identical
3. Same filing date
4. Same type of mark
5. Same owner
6. No pending cancellation proceedings
7. None of the marks can be a base mark for IR applications in 5 year dependency period
Benefits - reduction of overall renewal fees, reduced administration
How do EU TM Renewals work?
Due 10 years from filing and every 10 years thereafter
Can renew 6 months before renewal date
Grace period of 6 months
Filed online
Can renew more than 1 mark at a time
Can drop class(es) at renewal
Restoration not available but there is ‘Restituto in Integrum’
Fees for EU TM Renewals
Fees for standard marks
€850 for one class
€50 for second class
€150 for each additional class
25% surcharge if late renewal in grace period
Renewal fees for collective and certification marks are higher
How do renewals work for International TM filings?
Due 10 years from filing and every 10 years thereafter
Can renew 6 months before
Grace period - 6 months
Renewals filed directly with WIPO (no office of origin requirement for renewals)
Filed through paper form MM11 or online via Madrid E-Renewal Service
Can drop countries if no longer interested
No restoration
Fees for Renewal of IR
basic fee 653 Swiss francs
Individual fees and/or
Complementary fees and
Supplementary fees
What are the key sections of the Lanham Act for renewals/maintenance?
Section 8 - Declaration of continued use / excusable non-use
Section 9 - Application for Renewal
Section 15 - declaration of incontestability (optional)
Section 71 - declaration of use / excusable non-use (IR)
Why is Section 8 of the Lanham Act relevant for renewals?
Section 8 - declaration of continued use of/ excusable non use
Legally binding declaration that the registration is in use in the US for all the goods/services contained
Owners of US national registrations must file a declaration of use and/or excusable non-use due between 5th and 6th anniversary of registration (also due during 9th and 10th - and then every 9-10 years thereafter)
Need to provide a specimen (per class), I.e how mark is used in commerce
If mark is not currently being used a declaration of excusable non use may be filed - must provide a suitable reason as to why use hasn’t commenced and date when use is expected to proceed
Why is Section 9 of the Lanham Act relevant for renewals in the US?
Section 9 - renewal
Due 10 years from registration (renewable between 9th and 10th year) and then every 9-10th year thereafter
6 month grace period
Coupled with Section 8 - declaration of continued use / excusable non use
Why is Section 15 of the Lanham Act relevant to renewals in the US?
Declaration of Incontestability (optional)
Need to have 5 years of continuous use
A declaration of incontestability is a signed statement that the owner claims incontestable rights in a TM and continuous use of the TM for 5 years. Following the filing of a Section 15 declaration, the TM becomes incontestable - certain aspects of the registration cannot be challenged. Y third parties
Heightened protection
Why is Section 71 of the Lanham Act relevant for US renewals?
Declaration of use / excusable non use (for international registrations designating the US)
Due between 5th and 6th year from LOCAL registration date (not IR reg date), then again before 10th year and every 10 years thereafter
Does not constitute renewal - this is done through WIPO
What other types of maintenance are there?
- Annuities (Cayman Islands, Honduras)
- Rehabilitation taxes (Honduras) - if these are paid, TM cannot be cancelled on grounds of non-use
- Declarations of Intention to Use (DOI) (Cabo Verde, Mozambique)
- Affidavits/Declaration of Use or Non Use (Argentina, Philippines, Mexico)
- Dependent registrations (have to ensure and prove that base mark has been renewed for renewal to be made locally)
- Slogan registrations (Andean Pact countries) - due for renewal at same time as house mark
- Cautionary Notices
