MICHAELIDOU & CONSTANTINOU L.L.C

Renewal of European Union Trade Marks

The Intellectual Property Series

EU Trademark Renewal: Renewal Periods, Deadlines and Late Renewals

A European Union Trade Mark (EUTM) must be renewed within the prescribed time limits in order to remain in force. Failure to renew a registration on time may result in additional fees and, if the applicable deadlines are missed, the expiry of the registration.

An EUTM provides protection throughout the European Union through a single registration administered by the European Union Intellectual Property Office (EUIPO). Trademark owners should therefore monitor renewal deadlines carefully, particularly where an EUTM forms part of an international trademark portfolio.

Duration and Renewal of European Union Trade Marks

A European Union Trade Mark is registered for a period of 10 years from the filing date of the application and may thereafter be renewed for successive periods of 10 years.

There is no fixed limit to the number of times an EUTM may be renewed, provided that the applicable renewal requirements and fees are complied with.

Renewal extends the registration for a further 10-year period and takes effect from the day following the date on which the existing registration expires.

How to Determine the Renewal Date

The expiry and renewal date of an EUTM is determined by reference to the filing date of the original application, rather than the date on which the trademark was ultimately registered.

For example, where an EUTM application was filed on 15 October 2016, its first 10-year period expires on 15 October 2026.

The status and relevant particulars of an EUTM can be checked against the records maintained by the EUIPO.

Trademark owners should not rely exclusively upon receiving a renewal reminder. Although the EUIPO is required to inform the proprietor, and persons having registered rights in the trademark, of the forthcoming expiry at least six months in advance, failure to provide such information does not affect the expiry of the registration.

Responsibility for ensuring that an EUTM is renewed on time therefore ultimately remains with the trademark proprietor.

When Can an EU Trademark Be Renewed?

An EUTM may be renewed during the six-month period preceding the expiry of the registration.

The request for renewal and the applicable renewal fees should be submitted and paid within this period.

Where possible, renewal should be completed during the ordinary renewal period rather than being left until after the expiry date. Timely renewal avoids additional fees and reduces the risk of inadvertently losing valuable trademark rights.

Businesses maintaining larger European or international trademark portfolios should therefore have appropriate systems in place to monitor renewal deadlines.

Late Renewal – The Six-Month Grace Period

If an EUTM is not renewed within the ordinary renewal period, the registration may still be renewed during a further period of six months following its expiry.

Renewal during this additional period is subject to payment of the applicable renewal fees together with the prescribed additional fee.

The six-month grace period provides an important safeguard where a renewal deadline has been missed. Nevertheless, trademark owners should not ordinarily rely upon it, since late renewal results in additional costs and may create unnecessary uncertainty concerning the status of the registration.

Where an expiry date has already passed, the status of the registration and the remaining period available for late renewal should therefore be checked without delay.

What Happens If the Six-Month Grace Period Is Also Missed?

Where an EUTM has not been renewed within the ordinary renewal period or the subsequent six-month grace period, the EUIPO will determine that the registration has expired.

Once that determination becomes final, the trademark is cancelled from the Register, with the cancellation taking effect from the day following the date on which the registration expired.

At that stage, the matter is no longer an ordinary trademark renewal.

Depending upon the circumstances, it may be necessary to consider whether any remedy provided under European Union trademark law is available. The availability of any such remedy will depend upon the particular circumstances and the applicable procedural requirements and time limits.

A trademark owner who discovers that both the ordinary renewal period and the additional six-month period have expired should therefore seek advice immediately.

Is Evidence of Use Required for Renewal?

The renewal of an EUTM is essentially an administrative procedure. The proprietor is not ordinarily required to submit evidence showing use of the trademark merely in order to renew the registration.

Renewal should, however, be distinguished from the separate legal requirements concerning genuine use of European Union Trade Marks.

An EUTM may become vulnerable to revocation where, without proper reason, it has not been put to genuine use in the European Union in connection with the goods or services for which it is registered within the relevant five-year period.

The fact that an EUTM has been successfully renewed does not, by itself, establish genuine use or prevent a subsequent challenge based upon non-use.

Trademark proprietors should therefore distinguish between maintaining the registration through renewal and maintaining the substantive rights arising from the registration through genuine use.

Renewal for Only Some Goods or Services

An EUTM does not necessarily have to be renewed for all of the goods and services covered by the existing registration.

Where the proprietor no longer requires protection for certain goods or services, the registration may be renewed only in respect of selected goods or services.

Partial renewal can be particularly relevant where an EUTM covers several Nice Classification classes and the proprietor wishes to rationalise its trademark portfolio or reduce future renewal costs.

Any decision not to renew particular goods or services should, however, be considered carefully.

Once protection for particular goods or services has been lost, recovering that protection may require the filing of a new trademark application. In the meantime, third parties may also have acquired potentially conflicting rights.

EU Trademark Renewal Fees

The official renewal fees payable to the EUIPO depend upon the number of classes covered by the renewal.

The EUIPO operates a class-based fee structure. Accordingly, the cost of renewing an EUTM covering several classes will generally be higher than the cost of renewing a registration covering only one class.

Where renewal takes place during the additional six-month grace period, an additional late renewal fee is payable.

Official EUIPO fees and requirements may change from time to time. The applicable fees should therefore be checked at the time the renewal is to be filed.

Checking the Registered Proprietor's Details

A forthcoming EUTM renewal also provides a useful opportunity to review the information recorded on the EUIPO Register.

The proprietor should consider whether its registered name and address remain correct and whether any change in ownership has been properly recorded.

This can be particularly important following:

a change of company name;
a change of address;
a merger or acquisition;
a corporate restructuring; or
an assignment or other transfer of intellectual property rights.

Where the information appearing on the Register no longer accurately reflects the legal position, the appropriate recordal should be considered in connection with the maintenance of the trademark.

Frequently Asked Questions About EU Trademark Renewals

How often must an EU trademark be renewed?

A European Union Trade Mark is registered for a period of 10 years from the filing date and may thereafter be renewed for successive periods of 10 years.

Can an EU trademark be renewed indefinitely?

Yes. An EUTM may be renewed for successive 10-year periods without a fixed maximum number of renewals, provided that the applicable requirements and renewal fees are satisfied.

Is the 10-year period calculated from the registration date?

No. The duration of an EUTM registration is calculated from the filing date of the application.

How early can an EU trademark be renewed?

An EUTM may be renewed during the six-month period preceding the expiry of the registration.

What happens if the renewal deadline has already passed?

A further six-month period following expiry is available for late renewal, subject to payment of the applicable renewal fees and the prescribed additional fee.

What happens if the additional six-month period has also expired?

The EUIPO will determine that the registration has expired. Once that determination becomes final, the trademark is cancelled from the Register with effect from the day following the date on which the registration expired.

Where both periods have expired, legal advice should be sought promptly to determine whether any procedural remedy remains available in the particular circumstances.

Is proof of use required when renewing an EUTM?

Generally, no. Evidence of use is not required merely for the ordinary renewal of an EUTM.

However, separate rules concerning genuine use apply. Depending upon the circumstances, an EUTM that has not been genuinely used for the relevant period may become vulnerable to revocation for non-use.

Can an EUTM be renewed for only some of its goods or services?

Yes. An EUTM may be partially renewed so that the registration continues only for selected goods or services.

The consequences of removing goods or services should be considered carefully before filing a partial renewal.

Does the EUIPO remind trademark owners that renewal is due?

The EUIPO informs the proprietor, and persons having registered rights in respect of the EUTM, of the forthcoming expiry at least six months before expiry.

However, failure by the EUIPO to provide such information does not affect the expiry of the registration. Trademark owners should therefore maintain their own renewal records and should not rely exclusively upon receiving a reminder.

European Union Trademark Renewal Services

MICHAELIDOU & CONSTANTINOU L.L.C assists local and international trademark owners with the renewal and maintenance of European Union Trade Marks before the European Union Intellectual Property Office (EUIPO).

Our services include reviewing and confirming renewal dates, filing EUTM renewals within the ordinary renewal period, handling late renewals during the applicable six-month grace period, reviewing the status of expired registrations, partial renewals and recording changes affecting the registered proprietor.

Where an EUTM covers several classes, we can also review the existing specification with the proprietor before renewal so that the proprietor can determine whether protection should be maintained for all registered goods and services or whether a partial renewal may be appropriate.

Where a renewal deadline has already passed, the matter should be addressed as soon as possible. The options available will depend upon the status of the registration, the time that has elapsed and the applicable provisions of European Union trademark law.

For further information or assistance with the renewal of a European Union Trade Mark, please contact us.

This publication is provided for general information purposes only and does not constitute legal advice. Specific legal advice should be obtained having regard to the facts and circumstances of each particular case.

Renewal of EU Trademarks