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How Long Does a Trademark Registration Last for?

In  Australia, the initial registration of a trade mark lasts for 10 years. However, there’s an indefinite option to renew a trade mark registration every 10 years thereafter. So in theory, you can have indefinite protection for your trade mark. However, obviously you have to pay renewal fees in relation to each renewal each 10 years. It is important to note, however, that you shouldn’t simply register your trade mark or renew your trade mark if you’re not actually using your trademark or if you’re not using your trademark in relation to the specific goods or services that it is registered for. This is something that commonly happens in relation to trade marks that have been on the register for a long time. The businesses just go ahead and renews them without necessarily reviewing what their registration covers. It’s important to always be aware of what you’re protected for and what you’re not protected for given that business can evolve and change in the space of a decade.

In particular (based on the current legislation) if you don’t use your trade mark within at least three years from the date you register it, it can become vulnerable to removal from the register if it’s attacked by a third party for non-use. And that’s why it is very important to use your trade mark for the scope of goods/services claimed. And as noted, it’s also important to review your trade mark protection regularly, whether that’s every three years or every five years, you should conduct a portfolio review and see what your registration covers in terms of the actual goods and services that you’re still providing.

You may find that over time your business offering changes and your trade mark protection should also change to mirror what you’re doing in the marketplace over time. That might mean that you need to file new trade marks rather than just renew your old ones. Or, it may be that you need to amend the scope of goods/services of existing trade marks to remove any vulnerable ‘non-used’ goods or services. Likewise, you may change your logo over time. So if your trade mark changes over time, you’ll need to file new trade mark applications. We often get asked by clients to renew their trade mark and add X, Y, Z into it or change the logo. That’s not something that is done with a renewal. That’s a new trade mark application, it’s a different trade mark, and it’s a different scope of protection.

What happens if I haven’t used my trade mark in the last three years?

Removal of your trade mark for non-use is is not something that will happen automatically. It’s not something to be worried about in the sense of your trade mark will be automatically removed from the register if you’re not using it. It’s more that there is a risk that a third party, another business, for example, a competitor could attack your trade mark registration if it’s been on the register for at least three years and you have not actually been using it in those three years in relation to the specific goods or services which are claimed under that registration. (Marks filed before February 2019 are vulnerable to this particular type of removal attack only once on the register 5 years rather than three, but not used in the 3 years ending one month before another party files such a request).

How is it determined whether a mark should be removed or not?

It has to go a decision issued by a delegate of the Trade Marks Registrar. It’s basically an opposition process that happens before IP Australia, and the parties, both the owner of the trade mark and the  removal applicant, with the need to basically put that to the test. Ultimately the burden will be on the owner of the trade mark to prove that they have used it during the three-year period. That use doesn’t have to be extensive and in some cases could be just one token example of use within the relevant period. It would have to be genuine use and would have to show actual use. So while it seems like a low threshold, if you haven’t used your trade mark it may be difficult to defend against a removal attack. Another thing to bear in mind is that you can have a partial removal.

So if you have your trade mark registered for different kinds of goods or services and you have used your trademark for some of those goods or services, but not all of them, then your trademark may be partially removed to the extent that it hasn’t been used. Now, there is a discretion for the registrar to not remove your trade mark, even if you haven’t shown use; however, that’s only under very specific circumstances. And generally speaking, we always recommend that businesses ensure that if they want to keep their trade marks registered, that they continue to use them for the scope of goods/services covered, or, periodically review the registration and remove any non-use goods to avoid attack.  So it’s very much a use it or lose it registration system in Australia.

How much does it cost to renew my trade mark after 10 years?

Each 10 years you can pay a fee to renew for a further 10 years each time. You cannot opt to renew for shorter or longer periods of time.

At the time of this article the official fee in Australia is $400 per class assuming you pay your fee by the due date. If you are contemplating removing classes from your trade mark because you no longer provide those products/services this should be actioned ahead of your renewal deadline.

If you have missed your deadline your trade mark has expired. This means a loss of rights afforded to you in relation to that trade mark. However, this may not be fatal.  If you become aware that your trade mark was due to be renewed within 6 months of the original deadline it’s still possible to restore your trade mark. There’s a six-month grace period from the renewal deadline of a trade mark to restore that trade mark and renew it. However, this involves the payment of additional late fees to do that. At the time of this article, the government fee for renewing your mark late and after the deadline is $100 per month or part thereof.

That six-month grace period is set in stone. If you don’t restore your trade mark within six months from the renewal deadline, you will lose your rights and your trade mark will be removed from the register and it can’t be revived. If you learn after that grace period has expired that the mark had been due for renewal some time ago and still require protection of that mark you will need to file a fresh application with IP Australia, which will need to go through a new examination and full process. There is no guarantee that a new application will be accepted simply because you had once registered that same trade mark.

It is critical therefore to ensure your details with IP Australia or with your trade marks attorney are kept up to date so these deadlines are not missed.

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