With immediate effect, the German Patent and Trademark Office announces that its reminder letters for the trademark extension will be sent 6 months before the end of the trademark term. On this occasion, we also deal with the question of whether to renew or to reapply for a trademark.
According to the DPMA, the information letters have so far been sent 3.5 months after the end of trademark protection if the trademark had not been renewed at that time. With immediate effect, the German Patent and Trade Mark Office (DPMA) is now announcing that it will send this information letter earlier – at least six months before the end of the trade mark deadline. This is an organizational adjustment that is planned in several stages and is to be completed by the end of 2018.
Trademark protection – Duration and costs
The term of protection of a German trademark or a registered European trademark is 10 years. Once the protection of your trademark has expired, you can extend the protection status for another 10 years by paying a renewal fee. This can be done as often as you like, which means that even decades of protection for trademarks is no problem.
Oftentimes, however, a comparison of the costs for a brand extension has provoked discontent. In comparison, it can be seen that the renewal is more than twice as expensive as a trademark application. Currently, for example, the filing fee for a new trademark registration (including the class fee for up to three classes) costs 300 euros or 290 euros for a digital application. The renewal fee (also for up to three classes) is 750 Euro. You can argue, that the high costs could also serve to make trademark owners aware of whether they are economically successful with the trademark. Therefore, it can be hoped that unused brands will be abandoned. But normally the truth is: The longer a brand is established on the market, the more valuable it is.
Renew or apply for a new trademark?
Those who do not want to accept the comparatively expensive extension costs, however, will quickly arise this question: can’t we simply reapply for our trademark again? Yes, but the disadvantages do not offset the financial benefits. After all, if a new application is filed, the trademark would be re-examined and not renewed. In the case of a new application, it would therefore be possible that the trade mark would no longer be admitted for registration. When a trade mark is renewed, however, the protection status is guaranteed, there can only be a reclassification in the classes of the Nizzas, because they are readjusted annually. Under certain circumstances, this may also lead to additional costs if fees are charged for additional classes.
Even more serious, however, is the fact that if an existing trademark is registered again, the priority of the trademark will be set to the new filing date. In other words, you lose the priority of your trademark when you re-register a trademark. However, priority has a very important role in trademark law. Normally – and also in recent judgments, we reported – the owner of earlier trademark rights can assert himself against the owner of younger rights in court.
Reminder letters for the trademark extension is service without any legal obligation
The sending of the DPMA’s information letter is and remains a service provided by the Patent and Trademark Office without any legal obligation. In principle, every trademark owner must pay the renewal fee without being asked at the beginning of the 11th year of protection in order to extend the term of protection by a further 10 years. If you miss the deadline for punctual renewal, you still have 6 months until trademark protection expires for good – but only if you make it clear that you want to extend your trademark protection at the latest 2 months after the missed deadline by paying an additional delay surcharge.
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