Many companies and business owners often feel relieved after completing trademark registration.
Trademark registration is not permanent without renewal. Missing a renewal deadline can put brand protection at risk.
In particular, even if it is a brand that has been in use for a long time, if the trademark renewal period is missed, the rights may expire, and in some cases, a situation may arise where a third party acquires the same or similar trademark.
Today, we will learn about legal issues that may arise when you miss the trademark renewal registration period and how to respond.
If you missed your trademark renewal, check this first
Even if you miss the trademark renewal deadline, all rights do not immediately disappear.
However, the response method may vary depending on the current rights status, so you must first check the following.
- Is there a period during which additional renewal is possible after trademark expiration?
- Has the trademark right already expired?
- Has a third party applied for the same or similar trademark?
Recognizing these matters quickly is critical to protecting your rights going forward.
Trademark rights are not permanent rights
Trademark rights last for 10 years based on the establishment registration date, not the application date or registration decision date.
Additionally, if you apply for renewal registration before the trademark term expires, it can be extended for another 10 years.
In other words, a trademark right is a right that can be maintained semi-permanently through renewal, but its effect is maintained only if the trademark renewal is registered at a designated time.
This is why rights management is important after trademark registration.
What happens if I miss the trademark renewal registration period?
In principle, trademark holders must apply for renewal registration within one year before the expiration of the trademark period.
Even if you miss this period, your trademark rights will not expire immediately.
The Trademark Act provides for a certain relief system, stipulating that renewal registration can be applied for by paying an additional registration fee within 6 months after the expiration of the trademark period.
This is often described as a trademark renewal grace period.
However, once this period has elapsed, the trademark rights will expire, and in principle, a new trademark application must be considered.
What problems will arise when trademark rights expire?
1. A third party may occupy the same or similar trademark
When trademark rights expire, the trademark may become eligible for re-application. Many people think that if trademark rights expire, they can apply again. But the real situation is not as simple as it seems.
If a third party first applies or registers an identical or similar trademark after the trademark rights expire, there is a possibility that the re-application will be rejected, which may cause major problems in operating the existing brand. In particular, if the brand awareness is high or a certain customer base has been secured in the market, this risk can increase further.
2. Legal response to trademark infringement may become difficult
As long as trademark rights remain valid, various rights can be exercised against infringers.
For example,
- Request to stop using
- Warning letter sent
- Claim for damages
- Claim for injunction
You can take actions such as:
However, the expiration of trademark rights may significantly limit the ability to utilize these legal protections.
3. It may have a negative impact on brand value and business expansion.
A trademark is not just a right, but an important intangible asset of a company.
In businesses that grow based on brands, such as franchise business, online shopping mall operation, licensing business, investment attraction, and overseas expansion, ownership of trademark rights is an important evaluation factor.
Therefore, if trademark rights expire, unexpected disadvantages may arise during the business expansion process.
What should I do if I miss the trademark renewal deadline?
1. You must first check the current rights status
The first thing you need to do is check the current status of your trademark.
Specifically, you should review the following:
- Is it still renewable?
- Has the trademark right already expired?
- Are there any applications for identical or similar trademarks?
- Is there a possibility of re-application?
Response strategies may vary depending on the situation, so prompt confirmation is required.
2. If the renewal period is available, you must proceed with renewal registration immediately.
If you are still within the legally permitted renewal period, it is important to proceed with the renewal process as quickly as possible.
This is because as time passes, the options needed to maintain rights may decrease.
3. If it has already lapsed, you should consider the possibility of re-application.
If your trademark rights have already expired, you may need to consider filing a new trademark application.
However, before re-application, you must conduct a prior search for identical or similar trademarks and check whether a third party has applied.
Although many companies pay a lot of attention to trademark applications and registration, they sometimes pay relatively little attention to post-registration management.
However, trademark rights are a right that can expire if not properly managed.
Managing trademark renewal schedules should also be viewed as an important part of your intellectual property (IP) strategy, especially if your brand is a core asset of your business.
The best way to maintain trademark rights is to not miss the renewal period. If you miss the renewal period, it is important to check the current rights status as quickly as possible and consider appropriate response measures.
If you have missed the deadline for trademark renewal, need to check the current rights status, or wish to systematically manage multiple trademarks, please consult with an expert to review appropriate response plans.
This article reflects the information available when it was published. Contact us to discuss your circumstances.