In today’s highly competitive business environment, trademark renewal is a vital practice for companies seeking to maintain their distinctive identity and safeguard their position in the market. Understanding this complex but fundamental procedure can be enlightening and beneficial for any company concerned with protecting its identity and commercial value.
In essence, rebranding is much more than a bureaucratic formality. It is an act of protection and affirmation of corporate identity. As we said, in a highly competitive environment where originality and differentiation are critical, the aforementioned procedure becomes a strategic step in maintaining exclusive ownership of a registered trademark.
When a company decides to carry out a trademark renewal, it is ensuring that its commercial identity is continuously protected. In this way, its reputation will not be compromised by the unauthorised use of its trademark. This process not only involves the extension of the legal protection of the trademark, but also a reassessment of its positioning in the market and its relevance to constantly evolving consumers.
The procedure for renewing a trademark can vary depending on the territory in which it is registered. But, in general, it consists of a series of steps that must be followed precisely to guarantee the maintenance of the rights over the trademark. In the specific case of the European Union and Spain, this process is particularly decisive and must be carried out diligently to avoid possible legal complications and loss of rights.
What exactly is trademark renewal and how is it carried out?
Where should you carry out the due diligence?
In Spain, the process in question is managed through the Spanish Patent and Trademark Office (OEPM). While for trademarks valid throughout Europe, the procedure is carried out before the European Union Intellectual Property Office (EUIPO). Both institutions are responsible for ensuring that the process is carried out in a transparent and efficient manner. In this way, they provide companies with the legal certainty necessary to protect their most valuable intangible assets.
By the way, it is essential to emphasise that trademark renewal is not an automatic process. It is up to the trademark owner to be aware of expiration deadlines and to file the renewal application in a timely manner. This process involves all types of trademarks: individual, collective, figurative, etc. Negligence in this regard can result in the loss of rights over the distinctive trademark, which could have devastating consequences for the company in terms of reputation and competitiveness in the market. For this reason, it is very important to have the advice and representation of official agents such as ISERN, who will give sufficient notice of all the steps to be taken to process the trademark renewal without risk.
How do you renew a trademark in Spain?
Firstly, it is important to understand the duration and timeframes associated with trademark renewal in Spain. The initial duration of a trademark or trade name is 10 years from the date of filing the application. However, this protection can be extended through successive renewals, each for an additional period of ten years.
It is important to bear in mind that the renewal application can be filed within the six months prior to the expiry of the register. This deadline is calculated by adding 10 years to the date of the initial filing of the trademark or trade name application.
Once the term of the trademark has expired, there is a grace period of an additional six months to file the renewal application. During this time, however, surcharges will be applied to the renewal fee. During the first three months of this grace period, a 25% surcharge must be paid on the renewal fee. In the following three months, that is, from the fourth to the sixth month from the date of expiry of the register, the surcharge will be 50% on the basic renewal fee.
On the other hand, both the owner of the trademark and a duly authorised assignee may file the application for renewal. In the event that the application is made by an assignee, it will be necessary to prove this status by requesting the corresponding change of ownership or assignment of rights to the trademark. This can be done electronically or by paper submission, if the applicant is not required to interact electronically with the Administration.
Renewal fee
The fees associated with the renewal of a trademark are calculated according to the number of classes for which the trademark is to be renewed. It is important to remember that, once the expiry date of the register has passed, surcharges are applied to the basic renewal fee. In this sense, according to the fees in force from 1 January 2024, the basic fee for the renewal of the first class is:
- €174.18 for non-electronic procedures
- €148.06 for electronic procedures.
In addition, it is possible to partially renew the trademark, renewing only some of the classes for which it is registered. In this case, the application must clearly indicate that it is a partial renewal and the specific classes to be renewed must be selected. This approach allows for more flexible management of the company’s intellectual property assets, adapting them to its needs and market developments.
How do you renew a trademark in the European Union?
The European Union (EU) follows a process similar to that of trademarks registered in Spain, although with some particularities specific to the European sphere.
Like Spanish trademarks, EU trademarks have an initial validity of ten years from the date the application is filed. They can also be renewed indefinitely for successive ten-year periods. This renewal process is essential to ensure the continuity of trademark rights in the EU territory and to avoid possible legal disputes or loss of rights.
In effect, the renewal procedure for an EU trademark begins six months before the expiry of the register. The European Union Intellectual Property Office (EUIPO) will then send written notification to the owner or their legal representative. This will indicate the need to proceed with the renewal of the trademark.
The owner must certainly carry out the procedure within that period of six months before the expiry date of the registration. To do so, they must pay the corresponding fee. It should be noted that the last working day for requesting renewal and making payment is the date of expiry of the trademark. However, there is an additional grace period of six months after this date, during which it is still possible to renew, although with an additional surcharge of 25% on the renewal fee.
On the other hand, if the renewal application is not filed within this additional period, the EUIPO will inform the holder that their trademark has been cancelled and removed from the Register. The aforementioned entity will publish the resolution in the European Union Trade Marks Bulletin.
How is a trademark renewed in the European Union? Other important details about trademark renewal
It is essential to distinguish between the renewal of a trademark and its conversion in the EU. If the owner does not wish to renew the EU trademark but does wish to maintain its rights in certain states, they can file a request for conversion. It is essential to file this request during the three months prior to the end of the additional renewal period.
In general, the renewal process can be completed online using the renewal application form on the EUIPO website. Once the renewal has been completed, the EUIPO will send an official confirmation to the trademark holder or their representative, and the renewal will take effect from the day after the date of expiry of the existing register. In addition, the Register of European Union Trademarks will be updated and an information note will be published in the Trademark Bulletin to inform the public of the renewal.
As for the partial renewal of an EU trademark, it is possible to renew only some specific classes of goods or services for which the trademark is registered. This provides the owner with flexibility in the management of their intellectual property assets.
We take care of registering and renewing your trademark for you
At ISERN Patentes y Marcas, we have 100 years of experience in registering and renewing trademarks, as well as in the legal protection of these assets inside and outside of Spain. Our team of experts can advise you and manage all the necessary procedures to renew your trademark efficiently and effectively. With offices in the 12 main cities in Spain, we are here to help you protect and grow your business. Contact us now for more information.