Trade mark registrations in most territories come up for renewal every 10 years. The renewal process is typically straightforward, it simply entails a renewal fee. There are those few countries where the Registry also requires either proof that the mark is still in use or a declaration to that effect. Those countries include Algeria, Argentina, Belize, Cambodia, Haiti, Indonesia, Mexico, Mozambique, Philippines, Puerto Rico, Swaziland and the US. In territories like the US examples of use must be shown for every item in the listed in the registration goods.

Small-scale portfolio

For a smaller-scale business with a handful of trade marks, the decision to renew can be a straightforward one. Are we using the mark for the goods registered in this particular territory? Or do we have an intention to commence use in the near future? A ‘yes’ to either one of these questions justifies a renewal. Often times there is a hierarchy of marks protected under the brand: word mark protection for the main brand; a stylised or logo version; any intended for long-term use slogans or sub-brands. Over time (particularly in the course of 10 years) the main brand usually remains the same but all else, stylisations and sub-brands, could change. Instead of renewing these assets, budget would be better spent filing a new TM application for any current logos and/or slogan (if not already done), lapsing any registrations that are no longer used.

Global-portfolio 

For a global portfolio, a decision on whether to renew can be a multi-layered one. The bigger the business the more distanced those making the decision on whether to renew a trade mark are from the actual use of the mark in the given market. Global entities develop different approaches to manage these distances in a way that carries the lowest possible risk for the business. It is down to management style, internal resources and procedures and last but not least, budget. 

Historic marks

The brand names we grow up with have historic trade mark registrations dating back to the 60s and earlier, and these are valuable to keep. Or are they? Again it is down to the business’ needs and approach. This is the time to note that a trade mark registration for a mark that is no longer used in the market, cannot be enforced against others, and those others can apply to cancel it if they see it as an obstacle. So why keep the registration of a mark that you cannot enforce? The answer is rarely the same. 

A global business would want to keep historic pack designs simply because there is so much history there e.g. it is an important graphic or a pack design that has played a considerable role in building the reputation of the brand that still exists today. Arguably it is an asset worth keeping in key markets for the business. Arguments against this logic often circle around costs and practicality – it is expensive and has little to no practical benefit paying renewal fees for old marks that are no longer used. A global portfolio would entail renewals in a lot of countries (and renewal fees are often close in value to the fee for a brand new application). So why do companies do it? If budget allows, they just do – after all these are ‘nice-to-have’ heritage marks. But yet again, it is not as simple that. 

Countries where the business encounters counterfeits and lookalikes

More considerations on keeping historic marks can be taken on a country per country basis. For example countries where there are lookalike or counterfeit products encourage a business to gear up with trade mark assets they can use against counterfeiters, even those old logos. Russia, CEAB and China are a few of those markets where it is important to adopt a defensive approach to renewals. Although not enforceable as such, these rights could act as a deterrent to third party applications or be used to support the enforceable marks in the portfolio by showing the longevity of the brand. 

Non-core goods

Moving away from historic brands, what about non-core goods? Many a time, if budget allows, trade mark applications are filed to cover goods that are similar to the business’ core goods of interest but which are not necessary something the mark would end up being used on. It is a defensive approach, intended to give the business room to expand to similar products that could be of interest. At the renewal stage, 10 years later, it is often clear if the business will or will not need to maintain protection for those additional goods. The principle applies that, after the first 5 years of its life (as a registration), a trade mark is only enforceable for those goods for which it is used on. This is particularly relevant to single-class applications and perhaps International Registrations, where there could a considerable cost in renewing non-core goods. ‘Multi-class’ territories (e.g. where it is possible to file TM applications in more than just one class of goods) like the EU and the UK, often have the whole registration renewed (containing core and non-core goods), particularly as difference in costs would usually be slight.

Overlap of protection

Overlap of protection is also something to bear in mind. A national registration in an EU Member State country will already be covered (in terms of level pf protection) by an EU Trade Mark (EUTM) registration for the same mark and goods, so it makes sense not to renew the national right. That said if there are particular reasons to renew the national right e.g. it is part of a dispute or there is a priority claim based on it, there would be sensibility to renew. Further, if there is a risk that an EUTM would be difficult to maintain due to lack of use in a ‘substantial part’ of the EU, the safer option might be to retain the national right as well. 

Then if the mark is already protected by other applications that cover its seperate components, for example we can lapse a registration for the word mark  ‘SCHMIDT COSY FUZZ’ if we already have registrations for ‘SCHMIDT’ as the core brand name and ‘COSY FUZZ’ as a sub-brand on its own. Or perhaps if we have the word mark for a sub-brand, do we still need its stylized version, if that market had become less important for the product?

Marks that form the basis of an existing legal dispute

The latter paragraph raises another consideration: existing disputes with third parties. It is important to do a bit of due diligence and renew any marks that have been listed to form the basis of an opposition, invalidation or infringement actions against third parties.

Transitioning into a new brand

Transitioning into a new brand perhaps carries an arguable from all sides renewal approach on whether to renew current but soon to be replaced logos and pack designs. The goal, irrespective of approach, would be to avoid a gap in protection. Different territories transition into a new global visual identity for a brand with a different pace. Some markets could adopt the new look within 6 months, others can take up to 2 years, as different cluster of countries rely on spread out geographically production lines, each with its own time-line. It is therefore vital to renew trade mark right for the current pack until the transition to the new look continues. The approach might entail renewing only core protection, for example, only a black & white lock-up version of the current logo in territories where there is established use.  Meanwhile, for those particular territories where the business encounters lookalikes and counterfeits, retaining protection for all or most current elements could be a sensible approach.

Use!

Then, counterintuitively, I have kept elaboration on the key consideration for the end. Use! Use? Do we use the mark in this market? One way global companies can determine that from a single source is that precious list of annual sales figures for everyone one of its brands. This unfortunately is not an exhaustive source of information – it is rare that sales figures would capture sub-brands or current packs in use, and at times the figures can represent a cluster of countries (trade marks are not renewed by cluster of countries, but per country). These gaps of information make local brand managers and marketing teams invaluable in confirming whether a mark is currently in use or if there are any plans to use it in the future. Given that a global portfolio spans across a considerable number of countries, gathering this information on a local level can be hard. In fact, an upmost struggle! Not an impossible task, nevertheless. It seems that I have kept this point to end on with, perhaps intentionally, as it touches on the relationship between global legal teams, regional brand management and local marketing teams in a large company. The decisions from a marketing perspective inform the decision from a legal TM management perspective, and vice versa. Then to achieve a well-spent budget on renewals (which is a considerable chunk of the in-house budget for TM management) perhaps depends on this healthy communication, as where there is uncertainty, a legal team will proceed with the costs associated with a renew decision to avoid the risk of losing an asset that is turns out as valuable. 

A ‘grace’ period

If a renewal is missed or a decision delayed, most territories abide by the procedure of having a 6 months grace period to submit a renewal request, usually with the additional cost of a late renewal fee. 

There is no wrong approach but a lot of considerations which can lead you down a ‘rabbit-hole’ of ‘to renew, or not to renew’. Identifying an approach that works for the business and abiding by it, facilitates the decision-making process.