Registering a trademark is an essential step in protecting the identity of a product, service, or company. However, this right is not forever. Renewing a registered trademark is a procedure that every company or entrepreneur must keep in mind if they wish to maintain exclusivity over the use of their distinctive sign. Indeed, missing the deadlines can result in the loss of one of a company’s most valuable assets.
In this post, we clearly explain when the renewal should be carried out, how it is processed, and why it is critical not to leave it until the last moment.
How often should a registered trademark be renewed?
In Spain, the validity of a registered trademark is ten years from the date it was granted. After that period, it is necessary to renew the registered trademark so that it remains in force and legally protected.
In this regard, it is recommended to carry out the procedure within the six months prior to the expiration of the registration. This margin allows the application to be completed smoothly and with peace of mind. Although the law provides for an additional six-month grace period after expiration, this involves surcharges: 25% in the first three months and 50% in the last three. As you can see, being late can lead to a considerable additional cost.
It should be noted that a registered trademark is the only industrial property title that can be maintained indefinitely. However, to achieve this, it is essential to comply with the renewals stipulated in the current regulations.
Renewing a registered trademark: an essential procedure to maintain your exclusive right of use
Behind the design of a brand, its positioning strategy, and the symbolic value it acquires over time, there is a legal basis that protects it. As mentioned, this legal protection is only maintained if the corresponding administrative requirements are met, including periodic renewal.
From this perspective, making sure it is up to date with official registries is as important as building a solid brand. Failing to renew a registered trademark implies the loss of the exclusive right of use, which opens the door for third parties to use it, and even register it as their own. This can lead to costly legal conflicts and seriously affect corporate reputation and identity.
How is a registered trademark renewed in Spain?
Specifically, the procedure to renew a registered trademark in Spain is carried out through the Spanish Patent and Trademark Office (SPTO/OEPM). Furthermore, the process can be done in person or online. The latter simplifies the steps and also allows you to benefit from a 15% discount on the fee if you opt for the electronic route.
To submit the renewal application, it is necessary to:
- Indicate the trademark file number.
- Provide the owner’s details.
- Specify whether you wish to renew the trademark fully or only for certain classes.
- Finally, attach the proof of payment of the corresponding fee.
Once the form is submitted, the OEPM will review the documentation and the payment of fees. If everything is correct, it will grant the renewal for a new ten-year period. In some cases, an incident or additional requirement (office action) may arise, which will be notified to the holder for rectification.
A key detail: the OEPM usually sends a prior notice before the renewal period expires. Therefore, for this notification to arrive correctly, it is essential to keep contact details updated, especially the address and the email indicated as the preferred means.
Renewing a registered trademark in the European Union
On the other hand, if the trademark protection was requested at the community level, the process is managed before the European Union Intellectual Property Office (EUIPO). As in the Spanish case, the registration is valid for ten years and must be renewed within the six months prior to its expiration date.
Similarly, the EUIPO also sends a reminder to the owner or their legal representative as the expiration date approaches. To renew a registered trademark in the EU, the application must be submitted within the indicated period and the corresponding fee must be paid. If it is not done within that period, there is an additional six-month period to complete the procedure, although with a 25% surcharge.
It is important to keep in mind that if no action is taken within that additional period, the trademark will be removed from the registry and the EUIPO will publish it officially. Recovering it afterwards is extremely difficult.
Renewing a registered trademark: new simplified route since 2024
Since September 10, 2024, the Spanish Patent and Trademark Office (OEPM) has enabled a new online procedure that facilitates the process of renewing a registered trademark. This procedure, called Simplified Total Renewal Application for Distinctive Signs, allows trademarks and trade names to be renewed automatically, provided that no data modification is desired.
In particular, this advancement is useful for owners who simply want to keep their brand active without making changes. The process can be started six months before the expiration date and is available at the OEPM electronic headquarters, within the distinctive signs renewal section. Precisely, the goal is to streamline the entire process and reduce administrative errors.
The simplified system is structured into six steps that clearly guide the applicant:
- Start of the process. From this access point, you can start a new application or resume a previous draft. This option is relevant if you had already started the procedure but did not finish it.
- File and applicant data. Here, the file number of the trademark to be renewed is entered. The system automatically verifies if the period is valid. Specifically, the possibilities are:
- Without surcharge: if the registration is within the six-month period prior to expiration.
- With a 25% surcharge: if requested between the day following expiration and the following three months.
- With a 50% surcharge: if carried out between three and six months following the deadline.
- Out of time: if more than six months have passed since expiration, the system indicates this, but still allows renewal with a surcharge.
Additionally, if the person making the request to renew a registered trademark is the official owner, the platform will automatically fill in their details.
Type of renewal, documentation, fee payment, and receipt
Then, the remaining four steps would be:
- Select the type of renewal: total or partial. The system allows you to choose between renewing all classes protected by the brand or only some. In case of opting for a partial renewal, the list of classes currently in force will be displayed to select those to be maintained.
- Attach documentation. At this point, complementary documents can be uploaded, whether mandatory or optional, depending on the case. The system only accepts PDF files up to 5 MB, so it is recommended to have them prepared in advance.
- Payment and submission. Before finishing, it is possible to download a draft of the application to review the data. This document has a watermark indicating that it is not yet the final application. In this same section, the fee amount is shown, and two forms of electronic payment are offered: via a payment gateway or through a previous payment receipt.
- Receipt. Once the payment is made, the application is officially submitted to the OEPM. The applicant then receives an electronic receipt by email, which can also be downloaded in PDF format. This file includes the registration number, date and time of submission, and the barcodes corresponding to the payment.
Partial renewal and transformation: two key options in the EU
If your distinctive sign is registered as a European Union trademark, you can also renew it through the EUIPO website. The procedure follows a logic similar to the Spanish one, although with certain specificities. Among them, the possibility of renewing only some classes of products or services stands out.
Indeed, this resource is useful for companies that have reduced or redirected their activity and no longer need protection for all the classes initially registered. Thanks to this flexibility, it is feasible to maintain effective protection without assuming unnecessary costs.
But there is another scenario to consider: what happens if you do not want to renew a registered trademark in the EU, but you do wish to keep the rights in certain European countries? In that case, you can opt for what is known as trademark transformation. This process allows protection to be maintained in some Member States through individual national registrations.
However, you must be careful with the deadlines: the transformation request must be submitted within the three months prior to the end of the additional renewal period. If this time is allowed to pass, transformation will no longer be possible.
Once the renewal process is completed on the EUIPO platform, the body issues an official confirmation to the owner or their representative. Effectively, such renewal comes into force on the day following the expiration of the previous registration, thus ensuring there are no gaps in legal protection.
Furthermore, the European Union Trademark Register is automatically updated, and an informative note is published in the Official Bulletin to provide public visibility to the procedure.
More reasons to stay up to date with your renewals
With the advancement of digitalization and the integration of platforms such as the OEPM and the EUIPO, renewing a registered trademark is easier than ever. Even so, this does not mean the procedure is any less important. On the contrary, it is a reminder that intangible assets, such as trademarks, need continuous attention to preserve their value.
Of course, a timely renewal avoids surcharges, errors, and, above all, the risk of losing a competitive advantage. Therefore, having reminders, keeping contact information updated, and becoming familiar with the new electronic renewal systems is a good practice for any company or professional.
Do you need to renew a registered trademark? We’ll take care of it! At ISERN Patentes y Marcas we have been accompanying companies and entrepreneurs in the protection of their brands for more than a century, both nationally and internationally. In this regard, our specialized team takes care of all the necessary procedures so that you can renew your trademark without complications, with guarantees, and within the established deadlines.
With a presence in the 12 main Spanish cities, we are always close to you to help you consolidate and defend the value of your brand.
Do you have questions or need support for the process of renewing a registered trademark? Contact us and we will advise you!