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You can renew UK registered trade marks every ten years. You must apply for renewal on time or your trade mark registration may expire.

When do UK registered trade marks expire?

Registration will expire ten years from the date of your trade mark application. You can renew your trade mark:

• in the six months before your registration expiry date
• up to six months after your registration expires - this is known as 'late renewal'

You can .

The Intellectual Property Office (IPO) will send you a renewal reminder about six months before the registration expires (previously this period was four months). You will get a 'renewal certificate' following the successful renewal of your trade mark.

Trade mark renewal fees in the UK

You will have to pay a renewal fee of £200 for one class of goods or services your trade mark is in. It will cost an additional £50 for each extra class. Late renewals will incur an extra £50 fee.

Restoring a trade mark

If you fail to renew your trade mark in time, the IPO will remove it from the register. You may be able to restore if:

• it expired less than a year ago (from your renewal date)
• you pay the appropriate fee
• you explain to the IPO why you failed to renew your mark in time.

To restore your mark, you will have to satisfy the IPO that your failure to renew was unintentional. You also can't take infringement action against someone who used your expired mark in good faith while the mark was off the register.

Restoration is not automatic. It will cost you an additional £100 on top of the usual renewal fees. You must .

What happens when a trade mark expires?

If you choose not to renew or restore your registration, your trade mark will lapse after one year.

If you have allowed the registration to lapse, but you still use the trade mark, you may have residual goodwill in your brand or common law passing off rights based on use.

Can you claim a dead trade mark?

A registered trade mark may be dead or inactive for several reasons, including withdrawal, refusal, cancellation, surrender or removal. A trade mark may also be considered dead if it hasn't been renewed and the period of restoration has expired.

Just because a mark is listed as 'dead', doesn't mean that it is available. Someone may be using the mark, or accruing goodwill and recognition under the mark, so common law rights may apply.

Before you decide to use a dead mark, seek advice from a trade mark attorney to clear the rights to the mark, and make sure that you fully understand the circumstances around its status. Find a .

It is your responsibility to make sure that you keep your trade mark current by paying the appropriate renewal fees on time. If you change your name, address or email details, you must also update the record of your registration on the trade mark register - see how to amend your trade mark registration.

If you own a registered trade mark, there are several things you must do to maintain your registration and keep it current.

You must notify the Intellectual Property Office (IPO) if you:

• change your name, address and email that is held on the register
• notice mistakes on the register
• appoint or change representatives, such as trade mark attorneys
• surrender, ie give up your rights to a trade mark

You can carry out these notifications free of charge by filling in the relevant IPO forms. Find the forms you need to .

You will need to send your completed form(s) to:

Intellectual Property Office
Concept House
Cardiff Road
Newport
South Wales NP10 8QQ
United Kingdom

Surrender of registered trade marks

You can give up some or all of the legal rights attached to your registered trade mark - this is known as a voluntary 'surrender of registered trade marks'.

To give up your trade mark rights, you will have to send the IPO:

• a - to give up all your rights in a trade mark
• a - if you only want to give up some of your rights

There is no charge for this service.

If other persons have registered interest or any other rights in the mark, you must notify them before you file a notice of surrender.

If you're considering surrendering your rights, you should think about your reasons carefully. Surrender is a final action and you won't be able to reinstate your rights if you later change your mind.

Adding a class to a registered trade mark

When you apply for a trade mark, you specify a class or classes of goods and services that your registration will apply to.

While your application is pending, you may be able to request limited amendments to your application, including adding new goods and services to the scope of the registration.

However, once you've registered your mark, you can't expand the scope of protection - you can't add extra classes or alter the representation of the mark (eg change your logo). You may need to file a new registration to protect your existing trade mark under different classes.

If you own a trade mark, you must diligently protect it from infringement and other misuse, such as dilution, unfair competition, false advertising, passing off, cybersquatting and reputational tarnish.

If you do not enforce your rights, your mark may weaken, lose its distinctiveness and, ultimately, you may lose the right to use or defend it.

Trade mark enforcement - key strategies

To enforce your rights, you will typically have to:

• display your trade mark rights
• monitor your trade mark for misuse
• detect infringement
• take action against infringement

As a deterrent against misuse, you should clearly display your trade mark rights on your products and services.

Display your ® or TM symbols

There are two common ways of displaying your rights:

• the ® symbol or the abbreviation 'RTM' (for registered trade marks)
• the abbreviation 'TM'

Although it is not essential, you can use the ® symbol or the abbreviation 'RTM' to show that the mark has been registered. You can do this even if you have registered your mark outside the UK. It's illegal to use either the ® symbol or 'RTM' with a mark that has not been registered at all.

You can use the abbreviation 'TM' to show that you are using something as a trade mark, although in the UK this has no legal meaning. If you need to protect an unregistered trade mark, see passing off: definition, remedies and defences.

Monitor trade mark infringement

Monitoring and early detection of potential trade mark misuse are critical.

The Intellectual Property Office, which granted you the trade mark registration, does not police the use of the mark. You should proactively monitor the market to detect if anyone is using a mark that is identical or similar to yours.

What if someone is using your trade mark?

If you find that someone is using your trade mark without your consent, seek legal advice as soon as possible.

In most cases, you will begin addressing infringement by sending a cease and desist letter to the infringer. Many will stop infringing if they become aware that they have wrongly used your mark or used it unknowingly, or that you are willing to legally assert your trade mark rights.

If you can't resolve issues amicably and the infringement continues, you should consider alternative dispute resolution methods - such as - before taking legal action.

Professional mediators or legal advisors may be able to help you negotiate a trade mark settlement. Several options may be available, including:

• co-existence agreement - where you both use the trade mark, but agree not to trade in each other's market
• licensing agreement - where the party using your mark pays you a licence fee

Find out how to make money from trade marks.

Trade mark infringement litigation

If you can't reach a settlement, and the infringement continues, your only resort may be trade mark enforcement litigation. You may need to apply for a court order to stop the infringer and, if appropriate, to claim compensation for damages.

Read about defending trade marks against infringement or .

If you can't resolve trade mark disputes amicably, or through mediation and settlement, you may need to file legal proceedings to prevent infringement.

What is considered trade mark infringement?

In order to establish infringement, you will have to show that someone has used your registered trade mark (or one confusingly similar to yours) on related goods and services:

• without your consent
• in the course of a trade
• in the territory where the trade mark right is registered

You will likely have to demonstrate to the court that you have tried to enforce your trade mark and resolve the dispute - through cease and desist action, mediation or settlement - before starting litigation. See how to enforce your trade mark

To constitute infringement, the trade mark use must also fall within one of the . Infringing acts may include (among others):

• affixing the trade mark to goods or their packaging
• offering goods for sale or supplying services under the trade mark
• importing or exporting goods under the trade mark
• using the trade mark on promotional material or in advertising
• preparing to counterfeit your goods (eg use your mark on packaging, labels, etc prior to making counterfeits)
• using a company name that conflicts with your trade mark

If someone has infringed on your unregistered trade mark, or if your infringement case is unlikely to succeed, you may want to consider passing off action.

Dealing with trade mark infringement

Trade mark disputes are typically handled under civil law. You can file legal proceedings for trade mark infringement either through:

• the (IPO)
• the courts

Some types of proceedings you can only file through one or the other.

If you pursue court litigation, you can use the Chancery Division of the High Court of Northern Ireland if your claim is complex or valuable. There are no limits to legal costs or damages you can claim.

Trade mark hearing or written decision

If it is necessary to go through a legal process, both sides will have to file evidence in 91Ï㽶»ÆÉ«ÊÓƵ of their side of the dispute. Once that happens, you will be offered one of two possibilities:

• to attend a - at which the evidence can be questioned or discussed
• a - based on the evidence

Either way, both parties can appeal the decision.

Defences to trade mark infringement

Several defences to trade mark infringement are possible under the law, including:

• the use of another registered trademark
• the use of own name and address
• the use of certain indications
• the use of intended purpose
• the use of an earlier mark

A defendant may also argue that the mark in question is invalid. See .

Remedies for trade mark infringement

The court has a number of possible remedies at their disposal. Civil remedies for trade mark infringement include:

• injunctions - ordering the infringer to stop using the mark
• damages - such as the cost of litigation and attorney's fees - or account of profits
• delivery up and disposal of offending products

If there is sufficient evidence of infringement, the Police or Trading Standards Officers can take criminal proceedings in cases of intellectual property crime.

Importance of legal advice in trade mark disputes

You should get legal advice before going to court. You may want to seek advice from a trade mark attorney, or ask them to act on your behalf in resolving the dispute.

Find a or search for .

Unjustifiable threat of trade mark infringement action

The law protects businesses from unjustifiable threats of action for trade mark infringement. Before you decide to take action against an infringer, make sure that:

• you have the right to do this
• the trade mark registration applies in the particular market for the particular goods and services
• the actions of the infringer justify you asking for them to stop

See more on protecting registered trade marks.

As a trade mark owner, you are responsible for enforcing your own rights, including monitoring your trade mark to make sure no one else is using it.

There are several tools and services available to help you keep track of trade marks in the UK and globally. Some are free to use and many others are offered at a charge. If you decide to pay for a trade mark watch service, make sure that you choose a reputable and legitimate organisation and don't fall prey to scams or misleading solicitations.

Below we list some simple and free ways in which you can monitor trade marks.

Check the IPO trade mark journal

Before they register a new trade mark, the UK Intellectual Property Office (IPO) will advertise applications in their online journal.

They publish the journal every week on a Friday. It contains information on accepted applications for:

• UK trade marks
• international trade marks that include the UK

or in the archive.

Register for IPO's eAlerts

The IPO offers a free eAlerts service. This service allows you to sign up for alerts to:

• check the status of your UK or international registration application
• track other people's applications, eg to find out when they've registered or opposed trade marks

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Use caveats for monitoring trade marks

You can also send a 'caveat request' to the IPO if you want to monitor an application for - or registration of - a trade mark. A caveat is a notification that something has happened on an application or a registration.

Filing a caveat will enable you to find out if:

• an application is published, withdrawn, refused or deemed abandoned
• opposition has been filed
• an application is registered, withdrawn, refused or abandoned after publication
• a registration is not renewed
• a registration is renewed or expired
• a registration is surrendered or revoked
• an assignment application is received
• a trade mark is assigned, either partially or in full
• any action or event not listed here occurs

You can or .

The owner of the trade mark - if it is another person or business - won't know that a caveat has been requested.

Monitoring global trade marks: Madrid monitor

Similar to the IPO's tools, the World Intellectual Property Organization (WIPO) offers e-services that can help you monitor specific trade marks. These are:

• Madrid monitor - it helps you follow the status of your international trade mark application and registration, or search for specific trade marks
• e-notifications - the WIPO emails you copies of notices concerning your application or registration, including irregularity notices, provisional refusals, etc

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What if someone attempts to register a similar trade mark?

If you realise through monitoring that someone else is filing a potentially infringing application, there are several ways to dispute their registration. Each situation will be different, but typically you may be able to object to or challenge trade marks.

If you need to contest a trade mark application or registration, you should consider seeking advice from an attorney or IP professional. Find a .

After the Intellectual Property Office (IPO) accepts a trade mark application, they will advertise it in their . You can object to an application once the IPO advertises it - and before they grant the registration. There are two main types of objections: third-party observations and oppositions.

Third-party observations

Observations are not a formal legal action and the IPO will not necessarily act on a third-party observation. You may object to an application if you think the IPO has accepted in error. You must tell the IPO about any relevant facts they may not have been aware of. The IPO can use this as evidence in 91Ï㽶»ÆÉ«ÊÓƵ of a later objection.

You can .

Trade mark opposition

Unlike a third-party observation, opposing a published trade mark is a legal procedure. It enables you to prevent a mark registration if you can provide sufficient evidence.

You can oppose the registration of a trade mark at any time during the two months after publication in the IPO journal. You can oppose the entire application or only some of the goods or services it covers.

Grounds for opposing a trade mark application

The grounds for refusal of registration are divided into two classes:

• absolute grounds - relating to the intrinsic qualities of the mark
• relative grounds - relating to conflicts with earlier trade mark rights

Absolute grounds may apply:

• if the trade mark is generic, descriptive or non-distinctive
• where the objection applies to shapes, if the shape itself performs a purely technical function, adds value to the goods or results from the nature of the goods

Absolute grounds cover not just shapes but any characteristic that is intrinsic to the goods applied for - eg a repetitive high-pitched sound in a fire alarm.

Relative grounds for refusal occur when the mark that someone applies for is already in use, or similar to one already in use. Anyone can oppose the application on absolute grounds but only the owner of an earlier trade mark or earlier right may oppose it on relative grounds. This earlier right does not have to be registered.

Find out more about .

Notice of threatened opposition

If you want to oppose the registration, you should within the two months immediately after the date on which the application was published.

There is no charge to file this notice. You can oppose the entire application or the registration of the mark for only some of the goods and services.

You may want to contact the trade mark applicant prior to filing the notice to tell them that you are thinking of opposing the application. You will find an address with the application in the online journal. Contacting the applicant in this way may give you a chance of settling a dispute amicably without costly legal action.

UK trade mark opposition procedure

Once you file a notice of threatened opposition, you can follow the (if you are the owner of an earlier mark) or the . Not all opposition will be appropriate for the fast track route. Costs and timescales will also vary depending on the process.

The IPO may impose a cooling-off period, ie allow extra time for both sides in opposition proceedings to try to settle their differences without the need to go through the full legal procedure.

Challenging registered trade marks

Once a trade mark has been registered, you can still take legal action to challenge it, although it is usually best to contact the registered owner to see if there is an alternative such as mediation or negotiation. The different types of legal action you can take are:

You can also apply to intervene in proceedings for the above actions.

If you do decide on legal action, be aware that this can be complicated and costly. Seek professional advice before taking action. Find a .

Registering a trade mark gives the trade mark owner certain rights. These rights are backed up by law. It is very important that you respect these rights, or you could find yourself in legal difficulties over trade mark infringement.

Risk of trade mark infringement

You must not use someone else's registered trade mark for your own product or service, or use similar words or a logo which might confuse the customer.

The owner of the trade mark may take civil action. Criminal proceedings could also take place if sufficient evidence exists that you have intentionally used someone else's trade mark. Infringement could lead to a fine, prison or both.

Read more about enforcing your trade mark and intellectual property crime and your business.

Getting permission to use other people's trade marks

If you wish to use an existing trade mark, you should first contact the current owner. You can find the owner of a registered trade mark by .

You can usually get permission to use someone else's trade mark by:

• buying the rights from them
• licensing it from them

If you buy a trade mark, you must notify the Intellectual Property Office (IPO) of the change of ownership.

If you license a trade mark, you must agree the term of the licence and, again, notify the IPO of your licensing agreement.

Find out more about licensing and .

If you use other people's trade marks in the course of your business - eg in your own product literature or manuals - you should acknowledge the ownership by using an appropriate phrase. Where you use several trade marks, you can make a general acknowledgement of ownership.