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Can I Renew my Trade Mark for an Additional Class of Goods or Services?

The short answer is no. It’s only possible to renew your trade mark registration for the specific goods and/or services for which it is registered. You can delete certain goods or services if they are no longer being used or sold by your business under that trade mark, and you have no intention to sell them again under that trade mark. But it isn’t possible to expand on the scope of the goods or services covered by an existing trade mark registration.

If you want to start using your trade mark on different goods or services that are not within your registration scope then you will need to file a new trade mark application that covers those additional goods or services. Essentially it will be a separate trade mark with a new filing date and new trade mark number. It can be costly, and it can seem inconvenient, but it’s essential to protect your trade mark for goods or services that aren’t covered by your existing registration.

A word of caution

Before filing a new trade mark application, we recommend that you conduct a search to confirm whether your trade mark is available for use and  registration in connection with those different goods or services. Your trade mark’s rights that fall under your existing registration are limited to the goods or services that it covers. It doesn’t necessarily mean that you can register your mark for the additional goods and services of interest to your business.

And that comes back to the point that trade mark rights are limited to the particular goods or services that they’re registered for. And to a lesser extent, they give some protection for similar and related goods and services.

For example, if you released a brand of shoes and registered a trade mark around those shoes, and then later, you released a range of sunglasses. You would not be able add sunglasses to the same trade mark using the same registration. You’d have to file a new application for the sunglasses and wait to see if the trade marks office accepted it.

Another consideration is that your rights wouldn’t date back. If you registered your initial trade mark for shoes five years ago, your rights in relation to shoes date back to five years ago. When you then apply to use the brand on a range of sunglasses, you would have to file a new application in the present time, and you won’t be able to benefit from the timing of the original application..

If you have released goods not covered by your original registration then use by someone else may not amount to infringement. E.g. if someone else commenced use for sunglasses this does not necessarily infringe the trade mark registration you have in place covering shoes. The only exception to that rule is if you have established a reputation. If you’re a very well-known brand, you may be able to prevent others from using the same or similar brands for different kinds of goods by putting forward a case that it would cause confusion. It’s not the same as having a registration for those different goods, but does give you extra protection simply because you have that reputation.

Something to keep in mind that there are different levels of ‘reputation’. The more famous the trade mark is, the bigger the difference between the kinds of goods and services they will also have protection for. For example, Coca-cola is a very distinctive mark. You wouldn’t be able to register a brand of shoes called Coca-Cola shoes, even though it’s in a different class to the soft drinks brand.

Do I need to cancel my existing registration?

It depends if you are still using your trade mark for the goods or services for which they are registered. We recommend that a trade mark owner audit their trademark registrations when a trade mark comes up for renewal. It’s a useful exercise to determine if the registration you have still covers the goods and services that you are currently offering. There may be some that are no longer relevant, and you no longer need that registration. Then, consider what your business or brand will be doing in terms of goods and services over the next couple of years. Make sure that your scope for growth aligns with your registrations.

Remember, you cannot assume that because you own your trade mark for the goods you initially registered for, you will automatically be able to use and register that same trade mark for different goods or services. It’s also important to do an availability search and ‘freedom to operate’ search, to make sure there isn’t a third party out there that has their trade mark rights, registered or unregistered, for those different goods or services that you’re interested in before you go out there and launch. You could find yourself unwittingly infringing somebody else’s rights.

Mark My Words can assist you will trademark registration audits and availability searches.

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