Trade Mark Renewal 101: Why, When, and How to Keep Your Trade Mark Active

The initial registration process of your trade mark/s is only the beginning of the journey (albeit the most time-intensive one). Under Australian law, the initial registration lasts for 10 years (from the date of filing) and you can renew the registration every 10 years – something that is crucial to ensure that you retain exclusive ownership rights.

The renewal process is relatively simple, but it’s vital to know exactly when this needs to be done and the steps to complete it. 

1. Why you need to renew your trade mark: Quite simply, to protect your brand identity. The last thing any business needs is a competitor registering something similar when yours has expired. While there is a grace period to restore an expired trade mark within 6 months of the renewal date by paying the outstanding fees along with late fees, anything outside this time will need a new application.
2. When to renew your trade mark: As already stated, a trade mark registration stands for 10 years from the date of filing. You can renew this within the 12 months ahead of the renewal date. As noted above, IP Australia, the regulatory body, also provides a 6-month grace period after the 10 years is up, but you will have to pay a late charge fee on top of the renewal costs.
3. How do I know when renewal is due? There are 3 ways to do this: 1) The date will be on your original trademark registration certificate. 2) Use the IP Australia online facility to check the details of your trade mark – you can search by registration number or trade mark name. 3) Call or contact IP Australia for assistance. IP Australia will send a reminder closer to the 10 year expiration date, to the address for service on record. If you have a trade marks attorney or representative on record as your address for service, they should also be sending you timely reminders.
4. What does it cost to renew? The fee is set by IP Australia and will depend on how many classes the trade mark is registered for. This is currently $400 per class, but this is subject to change. Should you restore your rights during the 6-month grace period, there is also a late payment charge of $100 per class (again, subject to change). If you have your attorney or agent attend to this, they will charge a fee – usually reasonably minimal – to attend to the renewal and ensure future deadlines are properly scheduled in their systems.
5. What are the steps to renew? Once you’ve confirmed that you are inside the renewal date window (12 months before and 6 months after), you need to:

• Have all the relevant details to hand: trade mark number, class of goods and/or services, business details and contact information.
• Fill in the relevant forms and pay the required fees.

Once done, you will receive confirmation and your trade mark is protected for the next 10-year period.

6. Other important things to know about trade mark renewal: It’s not possible to make changes to the original registration during renewal. Any alterations to the logo, word, image or to add classes will generally need to go through a new registration process. You can, however, update any changes to contact details, and you can amend the goods/services of the original registration so long as the amendment is reducing the scope and not expanding upon it

As trade mark experts, we cannot over-emphasise the importance of keeping your trade mark registration current. Some ways to ensure that you don’t run the risk of it expiring or ultimately being removed or making a mistake during renewal include: 

• Keeping your contact details up to date with IP Australia or your representatives to ensure you receive timely reminders.
• Ensure you diarise the next renewal date – 10 years is a long time and it’s easy for this to be overlooked.
• Remember to renew and pay for all the relevant classes.
• Do not attempt to make significant changes during the renewal process. Be sure to make a separate application if this is needed.
• Use a trade marks attorney firm, such as MMW Trademark Services, to ensure a smooth and efficient process.

It’s also important to remember that Australian trade mark registration only applies within our borders. If you operate internationally, then you will need to take additional steps to ensure international trade mark protection.

At MMW, we’re here to advise and protect all your trade mark needs. Contact us today to discuss your registration and re-registration requirements.