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Reacquiring an Expired Trademark

One question that can come up from time to time is whether it is possible to reacquire a trademark that may have expired, and if so, how easy is the process?  The answer will depend on a number of variables such as whether the trademark is still active or has been removed, how long it has been since the trademark expired and whether someone else is using the trademark.

It is advised that you don’t let your trademark expire because of the potential difficulties involved in getting it back.  Your registered trademark will last for ten years (from the filing date) before it needs to be renewed, and this can be done at any stage in the twelve months before the expiry date.  To make it as easy as possible, you will even be given reminders so that you’ll know well in advance.  If you do happen to miss the deadline, you’ll have a grace period of six months during which you can restore it (however you will need to pay late fees in addition to renewal fees in this case).

If it is not renewed by the expiry date or within the 6 month grace period, the trademark will be removed from the register, and you’ll need to go through the process of applying for it from the very beginning again, with all the associated waiting times and fees. If you are in a position of needing to reapply there is no guarantee you will gain approval the second time through. Having previously registered the same trademark does not automatically give you any priority in a second application for the same trademark.  As you can see, it’s really in your best interests to keep track of your trademarks and ensure that you maintain control over them for as long as possible.

WHAT ARE SOME OF THE DIFFICULTIES WITH EXPIRED TRADEMARKS?

If you do want to reacquire a trademark that you may have left expire, it’s important to contact us so that we can review the information and look at:

  • Whether the trademark has expired or been removed altogether from the register. If the trademark has expired you have 6 months within which you may restore it and retain your rights over it.  If it’s been fully removed because that six months has lapsed then you will need to apply for it again through a new application.
  • New applications for a trademark always run the risk of running into issues that did not exist when you originally applied for it so this should be avoided if possible.
  • If it is a case where you have found someone else using the same or similar trademark after you have let it expire, then we will need to consider whether or not that person has registered a trademark in the meantime, and if so they’ve been granted a right to use it.
  • In cases where you may have let the trademark lapse, but have been using it continuously and someone else registers the trademark, we can also look at whether the use of that trademark is misleading or deceptive. Once a person has registered a trademark they’re granted the right to use it. So even if you succeed in re-registering your trademark, you can’t say another registered owner is infringing your rights. The use of a registered trademark by one person does not infringe on the rights of another registered trademark owner. This can become a complicated situation involving common law principles and Australian consumer laws. If the other person has not registered a trademark, then you may be able to register your trademark again – noting this will take a minimum 7.5 months and your rights will commence from the new filing date – providing the basis for an infringement claim and potentially a passing off or a misleading conduct claim.

Issues of infringement are complicated and rarely black and white so contact us if the above is your situation so we can assist further.

WHAT SHOULD I DO IF MY TRADEMARK HAS LAPSED OR EXPIRED?

The first thing to do is to contact us so that we can assess your position and give you the right advice about how to proceed.  It’s important that you don’t just assume you will need to put in a new application and you will automatically get the rights over the trademark back; you may have several options that you can look at.  Having all the relevant documentation at hand will help us to determine your rights and options in relation to your trademark.

Ultimately it is wiser simply to make sure that your trademark does not lapse, and we will be able to help you not only to remember the important dates surrounding your trademark but also to renew it any time in the 12 months before the expiry date.  At Mark Your Words we have over 30 years of combined experienced in all aspects of trademarks, including expired trademarks, trademark disputes and trademark protection.  Trademark issues can be time consuming and stressful, and we will ensure that you concentrate on running your business while we get you the very best outcome possible.

Our services include:

  • Trademark searches – we can assist with Australian and international trademark searches
  • Trademark applications in Australia and overseas – ensuring appropriate and valid applications are filed as well as providing advice in the event of issues arising.
  • Trademark infringements – our trade marks attorneys will be able to help with a range of trademark infringement issues including where there is an infringement of your rights or you have been issued a letter of demand alleging you are infringing another party’s rights
  • Trademark non-use and opposition proceedings

Our friendly and capable staff will be more than happy to discuss any trademark issues you may be experiencing, and our professional independent advice means that you can be sure you’re getting outstanding service for your business.

Contact us today for further information on the processes for reacquiring your expired trademark.

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