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UK Renewals & Restoration. By Kane Ridley, Trade Mark & Domain Name Formalities Manager, Keltie LLP. 12 October 2018. Renewals & Restoration - Overview. UK – Renewal UK Law How to Pay – Online vs Paper Good Practice UK – Restoration UK Law Procedure
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UK Renewals & Restoration By Kane Ridley, Trade Mark & Domain Name Formalities Manager, Keltie LLP 12 October 2018
Renewals & Restoration - Overview • UK – Renewal • UK Law • How to Pay – Online vs Paper • Good Practice • UK – Restoration • UK Law • Procedure • Successful and non-successful applications
UK Trade Mark Renewal - Act: Sections 42-43, Rules: 27-29 • A trade mark is registered for ten years from the date of registration (Section 42(1)) which in effect is the date of filing of the application (Section 40(3)). At the end of this period, the registration may be renewed for further periods of ten years (Section 42(2)). The renewal date is calculated from the date that the trade mark application was originally filed even where the applicant may have claimed an international priority date, except for transformation applications under the Madrid Protocol and European Trade Mark conversions which are deemed to have been filed on the date of designation of the UK or the EU date respectively.
UK Trade Mark Renewal • Due 10 years from filing and every 10 years thereafter. • Can be renewed online, fax or post. • Form TM11 - £200 1st class £50 every additional class. • Renewal window opens 6 months before the deadline. • If renewal not paid afforded a 6 month grace period (£50 late fee irrespective of classes).
UK Trade Mark Renewal - Timeline • UK Trade Mark filed 1st June 2008
UK TM Renewal - TM11 – Online • If only deleting some goods or services complete form TM23: Notice to partially surrender a registration
UK TM Renewal - TM11 – Online benefits • Quick and easy to process. • Automatic confirmation email sent to address specified within a few minutes of payment. • Renewal certificate will be sent electronically within a day of payment – sometimes sooner!
UK TM Renewal - TM11 – Paper form benefits • It is hard to argue benefits of the paper form! • Some internal database systems automatically generate a completed TM11. • Potential future integration could lead internal database systems to automatically pay a renewal when the renewal cycles are updated via software plugins. • In some instances renewal cannot be paid online i.e. if the last day of the grace period falls due on a weekend and renewal is attempted on the ‘next working day’ So paper form not totally irrelevant....yet!
Renewals – Paralegal good practice • Misleading invoices – Are a particular issue that can affect clients, particularly at renewal. • Companies with official sounding names such as the World Organization for Trademarks (WOTRA) and the Intellectual Property Organisation Service (IPOS). • The benefit of Advance Reminders – We can counteract these companies by staying in touch with our clients through the 10 year lifecycle, additionally a good way to ensure accurate records i.e. change of name/address.
Renewals – Paralegal good practice • Check your internal database against UK IPO online database – Due diligence. • Make sure you have sent adequate renewal reminders – Email, post, fax, pick up the phone! • Money up front client? Get instructions and funds well in advance of the deadline. • Make sure to add a reminder if you receive instructions before the renewal window is open.
Restoration of UK Trade Mark - Act: Section 43, Rule: 30 • If a registration is not renewed within six months of its renewal date, the proprietor (who may not necessarily be recorded as the registered proprietor) may still apply for it to be restored to the register within the next six months, that is, up to one year after its renewal date. In addition to the Renewal Request (form TM11) and its fee, the proprietor will need to file a Restoration Request (form TM13) and its fee, together with a full explanation of why the mark was not renewed within time. The request to restore the mark will be considered by the Team Leader, who may restore the mark to the register and renew the registration if, having regard to all the circumstances of the failure to renew, he is satisfied that it is just to do so (Rule 30(1)).
Restoration of UK Trade Mark • If registration not renewed within the initial 6 month grace period you may apply for restorationwithin 6 months of the grace period ending. • Form TM13: Request to restore and renew a registration. • £100 fee along with associated renewal fee. • A full explanation is required as to why renewal not met. • If there has been a change of ownership of the mark since its last renewal, the current proprietor will need to demonstrate his right to ownership, for example, to establish the chain of title in the mark. • UKIPO will exercise discretion, you are not guaranteed that the registration will be restored, if not restored the office will provide reasons and refund the renewal fee but not the restoration fee. The office should also offer a hearing in which a further appeal can be made.
Restoration of UK Trade Mark • Restoration fee includes late fee.
Restoration - Statement or Statutory Declaration • The supporting Statement is the chance to clearly layout reasons as to why the renewal was not paid. • In this document you should include: • Timeline of events leading to the lapse of the TM • Proof thatthere was a continuing underlying intention to maintain the registration • Details of the systems used in order to monitor the status of the TM • Details of the Administrators involved, their working history i.e. 5 years’ experience working as a paralegal • Information on the Company’s/firm’s experience in dealing with TM renewals
Restoration - Scenarios • UK TM No. UK00002341870 due for renewal 27th August 2013. • Applicant, based in UK but spends majority of its time in Malaysia appoints a UK representative to maintain the registration and ensure it is kept in force. • Applicant’s Malaysian trade mark counsel conduct a review of their client’s trade mark portfolio in early 2014 and discover that this trade mark has been removed from the register.
Restoration - Scenarios • Applicant did not receive any renewal reminders from its UK representative and was genuinely not aware that a renewal needed to be paid. • Applicant ‘shocked’ by this discovery and was under the assumption that the trade mark was still valid since it had entrusted prosecution and maintenance to a UK agent. • Form TM13 along with a Supporting Statement filed 26th August 2014 – 1 day before the final deadline.
Restoration Scenarios • A family run business had a TM renewal due 10th June 2017. Renewal was not paid by this deadline or within the 6 month grace period. A request for restoration was made within the additional 6 month period. In the supporting statement,the owner gave a broad picture of the severe business, personal and financial difficulties (including bankruptcy) the company had faced before, during and after the relevant period during which the trade mark could have been renewed. It was clear from the submissions that during that period the business had concluded that because of all the difficulties, it did not have sufficient funds to pay the renewal fees. • In this example the UKIPO did not grant the request for restoration as they concludedthat the failure to pay the renewal fee had been a conscious decision and as such cannot be said to have been “unintentional”
Restoration Scenarios • Your client asks you to record a seniority claim for their UK trade mark against a corresponding EUTM. Due to an internal miscommunication, the seniority is not recorded. However the UK trade mark record is closed meaning no further reminders will issue. Several months after the date in which the UK renewal was due your client asks for the seniority confirmation and you then become aware that in fact the seniority was not recorded and that the UK trade mark has lapsed. • In this example the UKIPO would most probably grant the request to restore the trade mark. During the whole renewal process it was the clients intention to keep the UK right registered via seniority. If seniority was not an option then they would have indeed instructed the renewal of the UK national mark and therefore the mark lapsing was unintentional.
