International Issues in Trademark Management

Nadaline Webster,

Everything is easy when you know how and this is particularly true of trademark management. Effective, efficient management of an individual trademark requires a small amount of attention to detail. As the volume of trademarks in your portfolio rises, however, the attention to detail (and paperwork!) needed rises exponentially.

As that portfolio expands across a number of regions - each with their own unique requirements and processes - it can start to feel a lot like trying to herd cats. From the administrative perspective, there is a lot of plate spinning and not always a lot of appreciation.

It is commonly understood that once you have registered a trademark, it is good for 10 years and in many cases, across many regions, this is true. At least for a given value of true. But there are critical regional differences, particularly as it relates to keeping details up to date for reminders that a renewal or other action is coming due and the relationship between registration and use.

Keeping your details up to date:

It is always important to keep the details of the trademark owner and representative up to date. Across a large number of trademarks, this can seem somewhat tedious but it is a necessary task - and in some regions, critical.

In the US, when a trademark is coming due for renewal, the USPTO does not issue reminder letters to the trademark owners or representative. The onus is on the trademark owner to manage the required filings independently. Failure to do so can ultimately result in the loss of your trademark registration.

The same can be said of both European registrations (EUIPO) and registrations obtained through the Madrid System at the World Intellectual Property Office (WIPO) in Geneva. Failure to renew or respond to office actions appropriately will, in both cases, end on the loss of your registration. However, both offices will issue reminders of upcoming renewals to the trademark owner or the representative making it critical that these details are kept accurate and up to date. It is best practice not to rely on such reminders but where a renewal has fallen through the cracks, it can be very helpful to ensure you will receive them!

The 10 year rule does not always apply:

As a generality, trademarks will need to have their registration renewed every 10 years but there are regions where this doesn’t strictly apply. In the US, your first renewal will be after 5 years of registration. This is primarily because you will be required to show proof of use (known as a Section 8 Declaration of Continued Use) or furnish details of interrupted use if applicable (Section 8 Declaration of Excusable Non Use). After this, you will need to renew your trademark registration every 10 years by virtue of filing a combined Section 8 (Declaration of Use) and Section 9 (Renewal).

No such filing of use is required at the EUIPO at the 5 year point however this does not mean that the continued registration of your trademark does not depend on its use in commerce. In the event that your registration is challenged for any reason and you cannot show adequate use, your registration will be cancelled.

Accordingly, the first renewal of your European Trade Mark (EU TM - previously known as a Community Trade Mark) will take place 10 years after registration and if your details are up to date, you or your representative will receive a reminder issued by the EUIPO.

International renewals at WIPO also take place on the 10 year anniversary of your registration but it is important to remember that many of the regions across which you are registered will have different requirements and care needs to be taken to note and manage those appropriately.

It’s important to remember that while the EUIPO provides a unitary system which confers protected rights in all Member States upon registration and renewal, the same cannot be said for the Madrid System. It is useful to think of the Madrid System as a ‘single collection point’ for a number of individual applications rather than a single application to cover multiple regions.

Applying to the EUIPO means meeting the requirements and processes of only one single unitary Intellectual Property Office. An application through WIPO will cover whatever regions you have designated at a single application point but each application must meet the requirements of the individual relevant Intellectual Property Offices. The same strictures apply to renewals through WIPO.

It’s not all bad news though! In virtually all regions, there is a grace period of 6 months should you miss the initial renewal date. It will cost you more to renew your registration but it does create an extra window of time. And time is often a precious thing in trademark management.

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