How long does a trademark last?
A trade mark is an invisible asset owned by a company or individual which can play a crucial role in the organisation’s marketing strategy and help it to establish a competitive edge over its rivals.
While legislation in many countries, including the UK, can enable a business to ensure that no other party is infringing upon its trade mark, it is important to be aware that it may be necessary to renew it periodically.
In the UK, a trade mark must be renewed every 10 years.
This article will look at the nature and history of trade marks and explain how companies can make sure that they remain valid.
Trade marks are a complex area of law, however, and it is recommended that you obtain expert advice.
Why are trade marks important?
Trade marks help to differentiate a business’s products from those of competitors, so aiding the marketing process and building a strong and successful brand that will allow the company to enjoy a dominant market position.
While many people instinctively associate trade marks with logos (e.g. Coca Cola, McDonald’s, Amazon), they can also include colours, words, sounds, designs, numerals, product shapes and packaging.
What legal protection is there for trade marks?
Considerable time, money and creativity is often devoted to creating a successful trade make and so many countries provide protection to prevent rivals encroaching upon it and unfairly profiting.
In the UK, this protection is provided by the Trade Marks Protection Act 1994 while most many other nations around the world also have legislation in place.
Once your trade mark has been registered, you are entitled to take legal action against anyone who infringes your rights and it is recommended that you use the ® symbol after registration to also deter possible unauthorised use of your trade mark by third parties.
Is it necessary to register a trade mark for it to be protected in the UK?
Unregistered trade marks may still enjoy some rights under the common law concept of ‘passing off’ of someone else’s goods or services. This can offers a more limited form of protection which is difficult and costly to implement, however, and so it is advisable to register your trade mark
Why is it important to renew a trade mark?
The creation of a successful, brand-building trade mark often involves considerable costs for a company and these valuable assets will form part of the asset balance sheet of successful companies.
It makes sense, therefore, to renew the trade marks you retain an interest in after the initial 10-year period to continue enjoying a return on your original expenditure. Failure to do so could allow a rival supplier to begin using the trade mark – eroding your competitive advantage and possibly causing reputational damage should they supply inferior products which customers mistakenly believe to have been provided by your company.
In some cases, should you not renew your trade mark and it is subsequently deemed to be ‘dead’, it may be possible for another organisation to register and enjoy legal protection for a trade mark that you created.
How long do trade marks last?
The rules relating to the duration of trade mark protection vary from country to country and so it is very important that companies are aware of the law as it applies to their trade mark so that they continue to enjoy legal protection.
How long do trade marks last UK?
Trade mark protection in the UK lasts for 10 years from the date of registration, after which time it must be renewed to remain in force.
The request for the renewal should be made to the Intellectual Property Office online, or by post, and can take place from six months before the due date and up to six months after it.
The cost is £200 for the first category of goods or services (e.g. class 25: clothing, footwear and headgear; class 35: sale of clothing, footwear and headgear as well as advertising: business management, business administration, office functions) that the trade mark is to apply to and £50 for each additional category (there is an option to reduce the number of categories at the time of renewal) while there is also an additional charge of £50 for a renewal that is made in the six months after the due date.
When applying to renew a trade mark you will need to provide its registration number together with an email address and details of your debit or credit card.
Can I renew my trade mark more than six months after the due date?
Where between six and 12 months have elapsed since the due date, a request to restore the trade mark must be made by post and include a written statement explaining the reason for the delay – the trade mark will only be renewed if the explanation is deemed to be satisfactory.
Can fraudulent activity take place over the renewal of trade marks?
It is important to be aware that some criminals may attempt to defraud companies over the process of trade mark renewals.
In such cases, companies who have no connection to you can send invitations to renew trade marks long before their due renewal date – asking for large sums of money to carry this out for you. You should receive an invitation to renew your trade mark either from the Registry, if you filed it yourself, or from the company that originally assisted you with protecting it.
There are also bogus organisations that send a business a false invoice for trade marks, attempt to charge for a so-called ‘renewal monitoring service’ or offer international protection for the trade mark should you pay a fee. Reading the small print is very important as often these bogus invoices are for entering a trade mark on a private register that has no official standing and the costs are very high for what is in effect no protection at all.
It is important for businesses to be aware that their details are available online once they apply for a trade mark patent or registered design with further information being displayed should their request be approved. This enables people with no connection to the International Intellectual Property Office to target the owners of trade marks and attempt to defraud them.
As such organisations often operate across international boundaries it is very difficult for the authorities to take action against them – and unlikely that any money paid to them will ever be returned.
What are Revocation (for non-use of a trade mark) proceedings?
Under UK law, anyone can apply to have a company stripped of a trade mark if it has not been used for a continuous period of five years since it was registered, providing that there are no acceptable reasons for its non-use.
Such an application can be made to revoke the trade mark in its entirety or just for particular categories of goods and services.
In view of the potential costs involved in such a move and the difficulty of the procedure it is advisable to first seek specialist advice.
What should I do if someone applies to revoke my trade mark?
In such an instance it is again highly recommended that you obtain expert guidance.
The process associated with such an application will follow the Registry’s Tribunal procedure and ultimately a decision will be issued if the matter is not resolved amicably. You will have the opportunity to demonstrate that you have been using the trade mark but this use has to be commercial use that is not token use. Having the case decided by a tribunal could be both costly and stressful, so you may wish to explore ways of reaching an amicable agreement with the other party.
What is the oldest trade mark?
While there is no clear-cut answer over the question of the world’s oldest trade mark, there seems to be no doubt that they have, in some form, been around for thousands of years.
It is, after all, a very natural human desire to want to signal that something is your property and that taking it without your consent will have adverse consequences.
Indeed, some people argue that the idea of trade marks stretches back around 15,000 years to the Lescaux cave paintings in France which depict bulls with marks on them – possibly denoting to whom such valuable livestock belonged.
As societies progressed over the centuries, a constant theme has been the desire of people to express their ownership or role in the production of goods – for example, with the use of watermarks in paper.
Some have argued that the first specific law relating to trade marks was ‘The Assize of Bread and Ale’ enacted by England’s King Henry III in 1266. This consisted of a set of rules regarding the size, weight and price of bread together with safeguards over the quality of the flour used in the baking process.
As part of the regulation process created by the law, bakers had to use a distinctive mark on their bread so that its origins could be quickly established.
There have been claims that the distinction of having the world’s oldest trade mark should go to the Belgium brewer Stella Artois, the origin of whose logo is said to date back to 1366.
It is generally accepted, however, that while such basic trade marks may have been around for millennia, modern logo design only dates back to the mid-nineteenth century as much of the world underwent rapid commercialisation.
The industrial revolution in Europe and the USA resulted in ever greater globalisation (encouraged by events such as London’s Great Exhibition of 1851 and the Paris Universal Exhibition in 1855) with the result that many goods were now being sold far away from where they had been manufactured.
Trade marks became seen as an effective way of safeguarding the interests of inventors and innovators who may have been fearful about having their intellectual property stolen.
An important part of this commitment to protecting and rewarding enterprise was increased international cooperation aimed at ensuring that trade marks were respected.
Another brewer, the Czech-based Pilsner, is believed to have the world’s oldest logo which has been in continuous use – with its design dating back to 1859.
A crucial date in the USA’s commitment to trade mark protection was 1791 when Secretary of State (and later President) Thomas Jefferson received a request from a manufacturer of sailcloth in Boston. Despite Jefferson backing proposed legislation the fledging country had other priorities and so no national law was introduced. Some states, however, did opt to enact Jefferson’s law themselves to provide trade mark protection.
It was not until 1870, however, that federal legislation was introduced, with the first trade mark registered in the USA thought to be that of paint manufacturer Averill (showing an eagle with a paint brush in its mouth) which was registered in the same year.
In terms of the UK (and returning to the theme of beer), the accolade for having the first logo goes to Burton-on-Trent brewer Bass whose iconic red triangle was registered under new legislation on January 1 1876 and the Bass beer marks remain in use today, which shows their longevity and value to their owner.
While impossible to verify, it has been claimed that a Bass employee slept overnight outside the registration office to ensure that he would be the first to go inside.
We can see, therefore, that as trade and commerce increased greatly in volume and complexity over the centuries, rulers and governments across the globe came to recognise trade protection as a crucial way of safeguarding the rights of entrepreneurs and encouraging further innovation.
Where can I find out more about renewing a trade mark?
We have seen above how important it is to renew your trade mark to ensure that it continues to enjoy legal protection.
While trade marks are intangible assets, for many companies their value might be greater than that of their tangible goods due to their vital role in building brands and driving future growth and prosperity.
Given the importance of trade marks, therefore, it is recommended that you obtain expert advice should you have any concerns about their renewal.
Trademark Eagle’s dedicated team of specialists has a wealth of experience regarding the issue and will be delighted to provide the advice you need at such an important time.
We are renowned for our excellent customer service and work at all times with the highest standards of confidentiality, integrity and professionalism.
Having taken the time to get to know your company we will guide you through the process of trade mark renewal and support you via email and live chat.
As well as offering you peace of mind over the renewal of your trade mark, we are committed to providing value for money and will always be totally transparent over future costs.
Please get in touch for more information on how we can help you:
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