Duration and renewal

Duration and renewal

Duration and renewal

The registration lasts for ten years and can be renewed for further periods of ten years, subject to the payment of renewal fees. Registration runs from the date of filing of the application for registration. A trade mark can be maintained indefinitely as long as it is renewed.

If renewal is requested (or the renewal fee is paid) in respect of only some of the goods or services for which the mark is registered, the registration will be renewed just for those goods or services.

If the owner fails to apply for renewal by the anniversary date, there is a grace period of six months after the renewal date during which they can file for late renewal on payment of an extra fee.

If no application to renew the trade mark has been received by the end of this six-month period, the trade mark registration will lapse and be removed from the register. The fact of removal will be published in the Trade Marks Journal or EU Trade Marks Bulletin. The only way of reviving rights in the mark is to apply to have it restored to the register.

A comparable mark will be treated as expired unless and until the proprietor of the corresponding EUTM renews it. Where an international mark designating the EU is renewed after expiry, the corresponding comparable mark will only be renewed if the proprietor notifies the UK registrar of the renewal within 9 months of the end of the Brexit transition period.

If an expired EUTM or international mark designating the EU is renewed, the UK registrar will also renew the registration of the corresponding comparable mark. However, in the case of an international mark, this will only be done if the proprietor notifies the UK registrar of the renewal within 9 months of the end of the transition period.

If the renewal and (for an international mark) notification requirements are not met within the specified time frame, the corresponding comparable mark will be removed from the UK register and will be deemed to have had no effect from the end of the transition period. If the EUTM is partially renewed, the comparable mark will only be renewed for the relevant goods and services.

For comparable marks derived from EUTMs that are due to expire within 6 months after the end of the transition period, the registrar has a duty to notify the proprietor of the imminent expiry as soon as reasonably possible, and must allow them to renew within 6 months from the date of the notification. Renewal may be partial (relating to only some of the goods and services covered).

Restoration of expired UK trade marks

A trade mark owner may apply to restore a lapsed mark to the register and renew its registration within six months of the date of the removal of the trade mark from the register. The applicant must:

  • File Form TM13 with the IPO.
  • Pay a restoration application fee, along with the usual fee for the first class and additional fees for each subsequent class.

On receipt of these, the IPO may restore the mark to the register and renew its registration if, having regard to the circumstances of the failure to renew, it is satisfied that the failure to renew was unintentional. It is therefore for the applicant to prove that it always had the intention (even if it was an underlying one) to maintain the registration of the trade mark and that due care was taken to ensure that it had effective systems in place to achieve proper renewal. The applicant's reasons for failure to renew its mark must be set out in a signed statement that accompanies Form TM13.

If the mark is successfully restored, the fact and date of restoration will be published in the Trade Marks Journal. If the restoration application fails, the IPO will inform the applicant of its decision, setting out its reasons and offering the applicant a hearing. The IPO will refund the renewal fee but not the restoration application fee.

The same principles apply to comparable marks (whether arising from EUTMs or from international marks protected in the EU).

Re-establishment of EU trade marks

An EUTM applicant or owner, or any other party to proceedings before the EUIPO who, in spite of all due care required by the circumstances having been taken, has been unable to comply with a time limit can have their rights re-established if the obstacle to compliance has the direct consequence of causing the loss of any right or means of redress.

This can be relied on to recover an EUTM that has expired through failure to renew. The proprietor must apply within two months of the removal of the obstacle to compliance, paying all necessary fees, and must in any event apply within six months of the end of the renewal grace period. The application (for which there is no specific form) must be accompanied by a statement of reasons for the inability to renew on time. Restoration will only be granted under exceptional circumstances which are unforeseeable and independent of the will of the party concerned.

Where an EUTM has been removed from the register at the end of the transition period but is subsequently restored, the proprietor has 6 months from the date of restoration to file a request to acquire the corresponding comparable trade mark, for all or some of the relevant goods and services.

Surrender

The owner can cancel their trade mark rights voluntarily at any time, either wholly or partially (that is, in relation to only some of the goods or services for which the mark is registered), by notification to the IPO or EUIPO, as appropriate.

Whether the mark in question is UK-registered or an EUTM, the proprietor will need to give some indication that all those with a registered interest in the mark (particularly registered licensees) have consented to the surrender.

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