A trademark registration does not protect forever without action. It must be renewed on time and used; otherwise it may lapse or be cancelled.
How often is it renewed?
Registration is valid for ten years and can be renewed for further ten-year periods without limit. Renewal is done at the Patent Office for a fee.
What if you forget?
There is a limited grace period in which renewal is still possible for an extra fee. After that the mark may be removed from the register, and a competitor could apply for a similar mark. So keep a deadline calendar, or let a lawyer track the dates.
Cancellation for non-use
An interested person may apply to cancel a registered mark if it was not used in good faith during the three years before the application, or if there was never an intention to use it. The owner can defend by showing the non-use was due to special circumstances in the trade, not an intention to abandon the mark.
Other grounds for cancellation
- The mark was not registrable in the first place. See what cannot be registered.
- The registration creates unfair competition with another’s rights.
- The application was filed in bad faith. On this ground action can be taken even years after registration.
How to keep the mark
- Use it in practice for the registered goods.
- Keep evidence of use. See using the mark correctly.
- Update the register when ownership changes, for example when the business moves to a company. See trademark and company name.
Where do you go from here?
A good trademark is chosen, checked and registered correctly from the start. At Paz Israel & Co. Law Office we support businesses, startups and entrepreneurs with availability searches, class selection, filing, responding to the examiner and oppositions, as well as registration abroad and enforcement against infringers. For more information see our trademark registration page, or contact us to schedule a meeting in Tel Aviv, Jerusalem or Modi’in.
This article provides general information, is correct as of the time of writing, and does not constitute legal advice or a substitute for reviewing your specific circumstances.