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Trademark renewals: beware of fraudulent reminders

27-05-2016

Managing the renewal of trademark registrations is vital if IP owners are to effectively maintain rights and ensure they are free for use in key markets. Unfortunately, trademark holders are being targeted by companies masquerading as (fictitious) IP registries, directories and renewals organisations (see our story: Beware false registries targeting IP owners). These companies attempt to dupe IP owners into paying unnecessary or higher fees for the registration or renewal of their IP rights.

What are trademark renewals?
Broadly, trademark maintenance comprises:

  • the regular payment of renewal fees that are necessary in most jurisdictions to maintain registered trademark rights;
  • additional actions required to maintain trademark registrations, such as timely filing proof of use or other documents in support of renewal or other maintenance applications; and,
  • proactive portfolio management via trademark audit, title updates/ recordals and other related services.

Why do you need to pay renewal fees?
In most jurisdictions, renewal fees must be paid in order to maintain a registered trademark right and retain it in the official register of trademarks of that jurisdiction. Although the exact formalities and timeframes can vary significantly country by country, the renewal is generally payable every 10 years. Unlike patent or design rights, there is no statutory limit on the lifetime of a trademark registration. In principle, it will exist for as long as renewal payments continue to be made. Missing a renewal deadline is potentially disastrous, as trademark rights – once lapsed – cannot be retroactively reacquired.

For this reason, it’s generally advisable for companies with a portfolio of trademark rights to employ the services of a third-party specialist to ensure that the rights are timely renewed and effectively maintained.

The importance of portfolio audits
Brands evolve over time and registered trademarks need regular audits to verify both validity and enforceability in line with current uses of a brand. Without regular audits of an active trademark portfolio it can be easy to lose sight of the rights that it contains. For example:

  • Are core brands and products fully protected in accordance with the current or envisaged use?
  • Have the trademark rights been correctly maintained (eg by registering any changes in ownership or other title updates?)
  • Are you renewing rights in the portfolio for brands that you no longer need or use?
  • Could any of those trademark rights be licensed or sold for profit?

A trademark portfolio audit analyses trademarks in a current portfolio, examining the strength of those rights and their usefulness to your business. Find out more about IP audits.

For more on our trademark renewals and portfolio management please contact our experts or email renewals@novagraaf.com.