Maintenance and Renewal
Updated, March 2016
1. How long will a trademark registration last?
Once you have registered your mark in the jurisdictions of interest, the rights you enjoy are perpetual if the registration is properly maintained. This means that it must be renewed when necessary—every ten years, in most jurisdictions. If the registration is not renewed before the due date, it expires. In some jurisdictions (e.g., Canada and the United States), there is a grace period that allows renewal with payment of a fine, or there may be provisions to restore a lapsed registration under certain circumstances. When a registration expires, the only option is to re-register the mark, which can be a costly exercise because your prior rights in the mark could be lost and a competitor could, in some jurisdictions, usurp your mark.
2. Apart from renewal of the registration, are there any other maintenance requirements for trademarks?
In most jurisdictions, a trademark must be used in order to maintain the owner’s rights in that mark. A registration can be removed from the Register if the mark has been abandoned or if there has been a prolonged period of non-use. For the mark to avoid being vulnerable to cancellation, generally there must be continuous, or at least periodic, genuine use of the mark (as registered) in association with the designated goods and/or services—that is, use not created purely to protect the registration. The requirements regarding how often use must occur vary, depending on the jurisdiction and, in some cases, the field of use (e.g., in the case of seasonal goods or services). In some territories, non-use for a period of more than two years constitutes automatic abandonment, and the registration is void. In other jurisdictions, intent may also be relevant. For example, in the United States, a trademark is abandoned if use of the mark has ceased without the intent to resume use, while there is a rebuttable presumption of abandonment after three years of non-use. Like many things in life, if you do not use it, you may lose it! It is, therefore, important to check the maintenance requirements in those jurisdictions where you value your registration and implement a protocol for monitoring use.
3. What is normally required for renewal?
In certain jurisdictions, renewal involves simply the payment of a fee. Occasionally, simple supporting documentation, such as a power of attorney or the authorization of the local agent, is also required. Some jurisdictions may require in addition the filing of the original registration certificate for endorsement of the renewal. Other jurisdictions require the filing of evidence of use (see FAQ #4). In certain countries, particularly those where the registration is based on a registration of the mark in the United Kingdom, it is necessary to file a certified copy of the U.K. registration.
4. What constitutes proof of use?
In some jurisdictions, in order to maintain the registration of a trademark, an affidavit confirming use in commerce, or providing special reasons for non-use of the mark, must be filed several years after the mark is registered (in the United States, for example, the affidavit must be filed in the sixth year after registration). If this is not done, the registration lapses and is cancelled immediately, regardless of when the renewal is due. Similar evidence of use must be filed every time the registration is renewed. In many jurisdictions, however, non-use of the mark for a given period of time (usually three years or five years, depending on the jurisdiction) will result in cancellation of the registration if it is challenged by a third party, unless there are special reasons for the non-use.
5. What if proof of use is not required for renewal?
In many jurisdictions, including the European Union (EU), proof of actual use is not required to renew a registration after the registration term expires. The registration may, however, be vulnerable to cancellation if the mark has not been used for a continuous period of time (which varies with the jurisdiction), unless there are special reasons for the non-use. With regard to a European Union Trade Mark (EUTM) (formerly Community Trade Mark) registration, use of the mark in a member state of the EU, or on goods exported from a member state, will constitute sufficient use to maintain the EUTM registration throughout the EU.
6. What types of problems may be encountered in renewing a registration?
In some jurisdictions, such as Cuba, it may not be possible to renew registrations because of trade embargoes or governmental controls. In other jurisdictions, if the mark is used only by a licensee, it may be necessary for the license to be recorded at the trademark office for the trademark owner to be able to rely on the use made by the licensee in renewing the registration. Similarly, it may be necessary to record all assignments of a trademark at the trademark office in order for an assignment to be enforced against third parties.
See also Trademark Licensing Fact Sheet
7. How do I renew my registration?
In the majority of countries, it is necessary to contact a local trademark attorney or agent to renew the registration on your behalf.