The stable rule is that as long as the owner renews the trademark, the exclusivity gained by trademark is perpetual. Considering most of the countries have renewal deadlines and grace periods as inextensible, monitoring trademark renewals and grace period times are crucial for keeping that exclusivity.
Monitoring the renewal dates and the decision on keeping or realising this exclusivity should be the part of IP Strategy. This strategy may serve as keeping the protection alive and also acquiring IP rights.
Keep the protection alive
Monitoring your trademark and renewing within the deadlines is critically important to have the exclusive rights derived from registration. Although it depends on the territory, most of the countries have 10 years period of renewal time.
Although in the grace period (regulated as 6 months in most of the countries), the trademarks are considered as valid, still it is not recommended to fall in the grace period by trademark attorneys since, in most of the countries with a grace period, the renewal fees have an additional fine:
Grace Period Fees:
Grace Period Times:
Of course, the worst case is to miss the deadline which basically means that the owner released the trademark and no longer has exclusive rights on that sign. This has dramatic consequences where there are cases when the owner missed the deadline and immediately filed a new application. They could not obtain the registration anymore due to other earlier rights to which they had not reacted by the time they had protection.
Also, it should be borne in mind that the beginning time for the calculation of the renewal date also changes from country to country:
Renewal Dates Calculation Times:
Keeping the protection alive is also important during the negotiation of trademark related agreements. Accordingly since once the renewal is missed, the power of the ™ decreases and the risks of using the ™ without registration will weaken the status during the bargaining of any kind of trade agreement related to the trademark.
TrademarkNow enables you to monitor all the renewal times including the grace periods of your portfolio with a Portfolio Management system. Portfolio360 allows you to watch your company’s marks.
Importance in acquisition/evaluation of risk of similarity in intended future application
The grace periods can also be monitored for the purpose of an acquisition of a similar/identical trademark in the registry. If the earlier trademark which poses a risk to the application is on grace period, monitoring the trademark and if it has been released by the owner -lapsed- filing the intended similar/identical application is a strategic monitoring process.
TrademarkNow enables you to use this strategy with Examatch grace period search feature. Bearing in mind that most of the countries provide some extra time limits for opposing new similar applications for recently lapsed trademarks, still, this is a valuable risk management style to use.
The take home message is that following the renewal deadlines will provide a gate for a perpetual exclusive right together with strength in possible trademark related negotiations. Moreover, deadlines will serve a more strategic way of evaluating the risk of confusion before filing an application.
The statistical information is obtained from TrademarkNow Data coverage.