Subject to renewals and maintenance, trade marks have the inherent quality of immortality. Maintenance requirements, however, largely depend upon the criteria of individual jurisdictions and international organisations.

Renewal of a UK registration

In the UK, a trade mark is renewed every ten years from its registration. If not renewed by the appropriate date, the trade mark will remain on the register for the following six months. Within that period an owner will have the opportunity to make a late renewal. Once that period expires, the trade mark will be removed from the register. The six months that follow from the date of removal are known as the restoration period, as within that period the owner can apply to restore the mark. If no such application is made, it would be perceived that the trade mark has been allowed to lapse.

Renewal of a US registration

A US trademark registration undergoes a different route. The relevant procedures are contained in Sections 8, 9 and 15 of the Lanham Act. Renewals are filed between the 9^th and 10^th year after the filing date and between every 9^th and 10^th anniversary thereon.

Section 8 stipulates for the need of a Declaration of Continual Use or Excusable Non-use. The purpose of Section 8 is not to cancel registered trademarks but rather to remove any unused or neglected marks, also referred to as ‘dead wood’, on the register. If the trademark is currently not in use due to, for example, circumstances beyond the owner’s control, a statement to that effect with an indication of expected use date would be sufficient to keep the mark registered. It is important to note that proof of use of the trademark, Section 8, has to be addressed between the 5^th and 6^th year following a registration. After that Section 8 is filed, together with Section 9, every 10 years.

Section 9 is the Application for Renewal.

Section 15 is concerned with a Declaration of Incontestable Rights. If a mark has been continuously used for a period of 5 years, and has no legal decisions or pending cancellation proceedings against it, Section 15 can be applied to make the mark incontestable or immune to legal challenge. Yet by way of practical interpretation, this immunity is not total. Although it would be more difficult to do, the mark can still be challenged. This is an optional perk to owners yet one that appears to be worth pursuing in order to add an extra layer of protection to the enforceability of a US trademark.

Renewal of International Registrations (IRs) designating the US

Having the US designated in an International Registration (IR), calls for a dual renewal procedure. Required is the filing of a Declaration of Use, Section 71, as well as the standard IR renewal form. The former resembles Section 8 and so in line with US national renewal criteria, the first Declaration of Use should be filed between the 5^th and 6^th year of registering the US as a designation for the trademark. Failing to meet US requirements, even if the international procedure for renewal has been followed, will result in the expiry or invalidation of the trademark in the US.

Maintenance in Different Localities

Some jurisdictions like Honduras and the Cayman Islands may require the payment of annuities which are annual maintenance payment that keep the trade mark ‘alive’. Rehabilitation taxes may also be included to avoid cancellation for non-use. The intervals of payment would vary from one locality to another. Meanwhile, in jurisdictions, like Burma and the Maldives, where no trade mark management procedures are implemented, cautionary notices by way of newspaper publications can be used as a form of registration, and when re-published, as a form of renewal.

Further caution is applied to UK dependant territories like Gibraltar, Jersey and Tuvalu. Local registrations in those regions would need a certified copy of the renewal of the base (UK) registration in order to be effective locally.

Merging of UK Trade Marks

For the purpose of cost efficiency in terms of maintenance fees, existing trade mark registrations can be merged into a single registration. Yet in order for the merge to be possible the marks need to be identical and must share the same filing date. They should also not be the subject of cancellation proceedings and neither one of them should be the ‘base mark’ for an International Registration which is still within its 5 year dependency period.

Closing Thoughts

Fairly clear-cut on the surface, with a formalities based procedure, renewal and maintenance processes can have their intricate elements, namely in relation to International Registrations. Meeting the requirements of different geographic designation calls for a watchful eye and close communication with local agents. An oversight of timelines and procedures can lead to weakening the protection of a trade mark, leaving it vulnerable to cancellation on the request of third parties. Nonetheless, with the right maintenance and monitoring procedures in place a trade mark can enjoy a long and healthy life.