Trademark registration is very important for any company that provides a service or that markets a product, but once the trademark is already registered, is it valid for an indefinite period?
The protection for trademark registrations is not perpetual, which is why there is a renewal of trademark registration by means of which the records may be renewed for consecutive periods of ten years from the date of your last due date.
When we talk about renewal, it is necessary to determine what kind of Registry is the one that is intended to renew, each of them relies on a particular validity, for example:
- Advertising Signs: have an indefinite period, their existence depends on the trademark or trade name that is referenced.
- Trade names: their validity ends when the name is abandoned or the activities of the company or establishment that uses it cease.
- Trademarks and service marks: they have a validity of ten years counted from the date of their concession.
That’s why our legislation in this last case, by means of the Law 380 “Law on Trademarks and other Distinctive Signs” in its article 21 establishes a special proceeding for the renewal of trademarks.
The application for renewal can be presented one year prior to the expiration of the Trademark registration. It may also be presented within a grace period of 6 months after the expiration date, period in which the trademark registration is in force, in which case you must pay an additional 50% surcharge to the official fee.
The application for renewal must be submitted to the Intellectual Property Registry in writing and must contain:
- Name and address of the holder;
- The trademark and registration number;
- Name and address of the Representative, when applicable, (must present special or general POA);
- The indication that all products and services will be renewed, if not, a list of the products or services must be presented in accordance with the desired reduction or limitation. (It is not possible to extend the list of products or services covered)
- Payment of the established fee;
- Signature of Holder or Attorney.
In the event that the application for renewal has errors or a modification is requested you can do it through the modification or correction of the application which must be submitted in writing. The request for correction shall be subject to the established rate as long as it does not alter or substantially change the trademark registration in its design, the mark, or the list of products and/or services covered by the trademark registration. Also, the records may suffer annotations or changes including: Change of Owner´s name; change of Address; Assignment; Use licenses among others. Those that must be presented with the same requirements that are established for the renewal, attaching in this case the documents that prove that change. This process accrues an established rate that must be paid at the time of submitting the application to the Intellectual Property Registry, if none of the requirements are omitted, an annotation is made on the volume where its registered recording the change.
It is very important to keep in mind that if you decide not to renew the trademark registration, it loses the protection completely and it is impossible to recover the registration once the trademark has expired and any third party may register or protect similar or equal trademarks to the one that was once protected.