Trade mark renewal

Renewal is the formality by which the proprietor extends the term of protection of its trade mark for a further period of ten years. Article L. 712-1 of the French Intellectual Property Code provides that registration takes effect from the filing date for ten years and is indefinitely renewable. European Union trade marks have the same term under Regulation (EU) 2017/1001, Article 53 of which governs renewal before the EUIPO.

Formal requirements and time limits

Renewal is a simple declaration accompanied by payment of the fee, without any fresh examination of the validity of the sign. The request is filed in the months preceding expiry, within a window fixed by the legislation, and a further period of six months after expiry remains open on payment of a surcharge. Once that grace period has passed, the trade mark lapses and may be restored only in the limited cases of restoration provided for by the legislation. Offices generally send a notice of expiry, but that notice is not an obligation whose omission would excuse the proprietor.

The subject matter of renewal

Renewal must relate to the trade mark as registered. Any alteration of the sign and any extension of the list of goods or services amounts to a new application, subject to examination and opposition and deprived of the benefit of the original date. The proprietor may, on the other hand, restrict the list of goods at the time of renewal, which is common where certain goods are no longer marketed and expose the mark to revocation. Renewal cures no defect: an invalid or revoked trade mark remains so after renewal, and a sign that has become descriptive or deceptive remains exposed to invalidity and revocation.

Practical pitfalls

Renewal is the portfolio management act whose omission is the most costly. It falls to the proprietor recorded in the register, which presupposes that assignments and changes of name have been recorded, failing which the office refuses or delays the formality. For an international trade mark, renewal is carried out centrally before WIPO for all designated countries. Letters from purported private registers demanding renewal fees without any legal effect thrive on the confusion of proprietors and should be disregarded.

Key points

A trade mark lasts ten years and is renewable indefinitely, by declaration and payment, with a six month grace period subject to a surcharge. Renewal allows neither alteration of the sign nor extension of the goods, only their restriction. Keep a schedule of titles, check that the recorded proprietor is the current proprietor, and send no payment to any body other than the competent office.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats is a patent litigation firm. Matters outside that field, such as trade marks, designs, copyright and IT contracts, are handled by practitioners the firm works with regularly, and by the firm itself when they arise in a patent dispute.

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