The duration of a trademark varies from State to State but in most cases it is ten years from the date of filing or registration of the trademark. Before the expiration date, you can decide whether to renew the trademark for an equal period of time or whether to let it expire.
In this post we talk about:
The duration of a trademark in Italy
Article 15,4) of the Italian Industrial property Code provides that:
“The registration lasts for ten years from the filing date, unless the waiver of the owner”.
In accordance with the provision of paragraph 2 of the same article
“the effects of the first registration start from the filing date. In case of renewal, the effects start from the expiration date of the previous registration”.
The renewal of a trademark in Italy
With regard to the trademark renewal, article 16 of the Italian Industrial Property Code provides that the renewal is carried out for periods of ten years.
The application for renewal must be filed within twelve months before the last day of the expiration month of the current decade (article 227 of the Italian Industrial Property Code) or, after, this period, within six months from the expiration date with the payment of an additional fee. The renewal must be filed for the same mark and the same products and/or services previously claimed.
In the renewal phase it is possible to limit the protection, by renouncing one or more products and / or services, but it is never possible to extend the protection by adding new ones.
It is clear from the above that the duration of an Italian trademark is ten years, potentially renewable forever for equal period of time, and that the deadline must be calculated starting from the application date (for more information on renewal costs, please contact Eva Troiani’s law firm).
The duration of a trademark in the European Union
Also the duration of an European Union trademark is ten years from the date of filing of the application and it is potentially renewable indefinitely for further periods of ten years (article 52, EU Trademark Regulation n.2017/1001).
The renewal of a trademark in the European Union
The request for renewal must be filed within a period of six months ending on the last day of the month in which protection ends, as well as in the same period it is necessary to pay renewal fees.
Failing this, the request of renewal may be submitted and the fees paid within a further period of six months following the day referred in the first sentence, provided that an additional fee is paid within this further period.
Article 54 of the EU Regulation provides that:
“The EU trademark shall not be altered in the Register during the period of registration or on renewal thereof”.
The alteration of the reproduction of the mark is allowed only to the condition expressed in a very detailed way in paragraph 2 of the article 54 of the EU Trademark Regulation, namely:
“nevertheless, where the EU trademark includes the name ad address of the proprietor, any alteration thereof not substantially affecting the identity of the trademark as originally registered may be registered at the request of the proprietor”.
The duration of an international trademark
The above mentioned rules concern Italian and EU trademark.
The duration of the international trademark is ten years, starting from the date of registration of the trademark.
With regard to trademark registered in other foreign Countries (for example trademark registered in China, in Russian Federation or in Saudi Arabia) you will obliged to check each national laws in order to be sure that their duration is actually ten years (this is the duration in most but not in all cases), then you have to verify whether the deadline for calculating trademark expiration starts from the filing date of the trademark or from its registration date. Finally, you should verify whether there exists the possibility to renew the trademark after the expiration date with the payment of an additional fees.