7 Risks If You Miss a Trademark Renewal

1-2. Loss of Protection

Loss of protection altogether is the most serious repercussion of failing to file your trademark renewal on time. There are two main ways in which this risk of total loss can occur:

—Someone else may take the trademark

Although a rare occurrence, it may be the case that, where trademark protection has lapsed, a competitor will snap up the mark and register it or a very similar mark as their own.

Although marks that are identical or similar to pre-existing trademarks are not registrable, once a mark is no longer registered, identical or similar marks are theoretically permitted. Provided that no other forms of pre-existing rights interfere with the competitor’s registration of the mark, it will not be refused.

This raises the possibility of losing your trademark to a competitor if you miss the renewal. 

—Trademark re-registration may not be allowed

The mark may also be lost altogether if, after failing to renew and looking to re-register, a similar mark has been registered in the meantime. As per EUIPO guidelines, a mark will be denied registration if it is similar to an already registered mark or interferes with existing rights.

If no such issues existed whilst the mark was registered, but have arisen since the date for renewal has passed, then any attempts to re-register the mark will be denied.

As well as running the risk of losing the mark altogether, missing your trademark renewal risks weakening the parameters of the protection it receives if re-registration is later sought.

Similarly, if protection has lapsed in multiple countries and a new similar or identical mark has been registered in some of these countries, then a later re-registration may also be limited geographically.

This inability to re-register your mark in certain countries can significantly hinder business prospects and profits.

As well as risking the limitation or discontinuation of trademark protection, failure to renew can also be costly, regardless of the above issues with re-registration.

Regardless of whether any of the aforementioned potential issues have yet been encountered, owners who delay their trademark renewal will definitely encounter additional costs in the form of late fees.

After the renewal date, many national IP offices provide a six-month 'grace' period in which the renewal can still be filed. However, waiting until this time will incur bigger official charges than filing the renewal on time.