As of 28 March 2008, the period in which a trade mark can be renewed after its expiry date will be reduced from 12 months to 6 months. This change to the renewal grace period is in accordance with the Trade Marks Amendment Act 2006 (No.114, 2006)
The initial expiry date of all Australian trade mark registrations, including marks claiming convention priority, is 10 years from the original filing date of the application for registration Trade Marks Act 1995 s.72(3)). Requests for renewal of registered trade marks may be made any time within the twelve months prior to the date of expiry (reg. 7.3). For trade marks due to expire on or after 28 March 2008 the grace period for payment of renewal fees is now 6 months, and is not extendible. When renewing a trade mark during the 6 month grace period:
- a monthly late fee is payable (in addition to the renewal fee); and
- requests for renewal must be in an approved form (Trade Marks Act 1995 s.79).
In the case of trade marks with an expiry date before 28 March 2008 a 12 month grace period still applies.
This change to the renewal grace period brings Australian trade mark practice in this area into conformity with the timing allowed for renewals in the United States. However, US trade mark law has the additional requirement that an Affidavit of Use be filed for a registration to remain valid.
So What?
This change to the renewal trade mark grace period will not require any substantial changes to practice, but trade mark owners accustomed to paying renewal fees at the last opportunity will need to bring forward their deadline for deciding whether to renew.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
