Trade Mark Renewals; Why is Renewing your Mark so Important?

Forgetting to renew your mark can lead to a number of trade mark issues, as shown in the recent “Ben Fu” case.
It takes alot of time and precision to make sure your trade mark is representative of your brand and covers the correct classes. You need to make sure that you are 100% happy with your mark before applying for a trade mark. This is because, once your mark has been filed, this cannot be changed. When you are happy with your brand, you can file for a trade mark. Once you are accepted by the IPO, you will be on the register for 10 years. To prevent your mark being removed from the register you will need to renew this. Forgetting to renew your mark can lead to a number of trade mark issues.

Perhaps a more recent example of this has been reported, concerning the brand Penfolds in China. Back in 1995, a trade mark was filed to the State Administration of industry and Commerce in China, with the aim to register the Mark “Ben Fu”. After the 10 year period came to a close, the “Ben Fu” mark was not renewed, which meant the mark was readily available again.

By not renewing your trade mark you are therefore at risk of brand copy cats. This is where they can play off the reputation of your brand. This is damaging if you have spent a long time building brand reputability over the past 10 years. As Penfolds did not renew their brand, for over 25 years, they too faced this challenge.

The “Ben Fu” brand faced several court appearances over individuals trade marking the brand under bath faith, successfully invalidating a number of attempts. Recent cases were noted by the Chinese Intellectual Property Office whereby individuals went against the original brand and tried to apply for their own version of “Ben Fu’, these too were rejected for seeking to rely on untenable grounds.

The TWE (new agents of the original Ben Fu) have applied for their own trade mark for the “Ben Fu” brand to sell under goods and services for wine (reapplying for their old mark), in China and Australia. After 10 years of legal actions and fighting off individuals who sought to trade mark the same product, the TWE have won this lawsuit and regained the “Ben Fu” mark.

it is best advised if you want to keep using your mark to represent your brand, you should not forget to renew this. The brand Ben Fu, as discussed above, was lucky in their attempt at regianing brand rights. This may not be the case for every mark that has failed to be renewed.

If you need to renew your trade mark the Intellectual Property Office will notify us, at the Trademarkroom, of the expiration date and we will send you letters which will allow you to reply and say whether or not you would like your trade mark renewing.

If you have any questions on copy cats or trade mark renewals, please do not hesitate to contact the Trademarkroom team today.

Anna Orchard

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