Trademark renewal – Is it worth renewing a trademark that is no longer used?

Trademark renewal – Is it worth renewing a trademark that is no longer used?

Sometimes we have a registered trademark that we no longer use – for example, because we use a new, refreshed version of our logo. It also happens that we stop using a brand or slogan registered as word trademarks. When the current protection period of such an unused trademark is about to expire, an important question arises: is it worth investing in the trademark renewal?

In this article, we will outline the most important aspects of this decision. We will help you determine when maintaining rights to an unused trademark can be beneficial, and when it is better to give up further protection – due to the risks and costs involved.

What does renewing trademark protection mean?

Registering a trademark with the EUIPO or a national IP office, eg. the Polish Patent Office, grants exclusive protective rights to the brand or logo. This right gives exclusive authority to use the trademark for specified goods or services in the territory where the trademark is registered. By registering a trademark, we block the possibility of competitors legally using it.

Trademark protection is granted for 10 years but can be renewed for further periods by filing a renewal request (EUIPO) and paying the official fee. Renewing trademark protection is thus an active maintenance of the rights to your brand.

Advantages of renewing trademark that is no longer used

• Asset value – A registered trademark has asset value – it forms part of the owner’s property. If not renewed, it expires;
• Image value – Having one or preferably several registered trademarks demonstrates an entrepreneur’s care for safeguarding the company’s intellectual property rights and positively affects their image as a professional;
• Future security – Renewing trademark protection can be strategically important if the company decides to return to the old brand or logo in the future;
• Licensing or sale opportunities – The protective right to a trademark can be licensed to another company or sold.

Disadvantages of renewing unused trademark

• Costs – Renewing trademark protection requires paying a fee for a new 10-year protection period. The official fee is paid for each Nice Classification class;
• Risk of cancellation – If a trademark has not been genuinely used for 5 years, its registration may be cancelled upon the request of a third party, even if protection was renewed – and the trademark owner may be charged costs related to the cancellation proceedings;
• Lack of practical usefulness in disputes – A trademark unused for more than 5 years does not provide an effective basis for filing oppositions, cancellation requests against a third party’s trademark, or infringement lawsuits. In such disputes, the opponent can raise a “lack of use” defense. Then the IP office or court will require the trademark owner to provide proof of use of the trademark for the past five years. If such evidence is not provided, the opposition, request, or lawsuit will not be considered in so far it relies on a non-used trademark.

Consequences of not renewing trademark protection

• Loss of monopoly on the trademark – After protection expires, we lose the exclusive right to use the trademark and the effective tool to oppose anyone using an identical or confusingly similar sign;
• Opening the door for competitors – Others may register an identical or similar trademark, and we will no longer have a trademark to oppose such a third-party trademark application;
• Costs and risks of re-registration – If later we decide to return to the old brand, the entire (sometimes cumbersome) registration procedure must be conducted again.

What to keep in mind when deciding on trademark renewal

Registering a trademark- both for a logo and a word mark – builds a competitive advantage, positive image, and company value. If the trademark is completely unnecessary, there is no justification for incurring renewal costs.

In every case, it is worth discussing the matter with a IP attorney from an experienced patent law firm.

If you need support in assessing whether renewing trademark protection makes sense in your situation, please contact our IP law firm.

We provide comprehensive assistance in protection of your brand and logo. Contact us!