From 16 March 2019, pursuant to amendments made to the Industrial Property Act (IPA), the procedure for extending protection of a trademark changed.
Submission of proper payment has now become the sole condition for extending protection. At the same time, in implementing Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trademarks, the legislator is now obliged to introduce a requirement that the Patent Office inform rights holders of upcoming deadlines for submitting payment for protection. In practice, this means that holder of the right to trademark protection or a proxy thereof, such as a trademark attorney, receives a letter half a year before the protection of a trademark expires, informing them about the approaching deadline and the necessity to submit a payment.
There is a risk
This solution, while appearing to be convenient for the trademark holder, has its drawbacks. First of all, the Patent Office has stipulated that non-receipt of the letter does not exempt the owner of the trademark from the obligation to observe the payment deadline. This means that dismissing a proxy is a risky decision.
Prior to the amendments, attorneys were obliged to be aware of the protection period’s expiration date and notify the client accordingly. The Patent Office, in contrast to an attorney appointed by the owner, also does not provide information about the fee itself. This means that the authorized entity must check the amount of the fee and calculate it depending on the number of classes in which the trademark has been registered. Payment of the fee in the wrong amount runs the risk of being rejected, and of protection not being renewed or extended only to some goods or services.
Moreover, official correspondence from the Patent Office is sent to the address of an enterprise as listed in the Office’s database. Sometimes this address may not be where the company presently receives correspondence. This means that if the holder of a trademark does not update its address in the database and does not appoint an attorney, it will have to independently monitor all deadlines for the protection of industrial property rights. A letter sent to the wrong address will not be accepted as grounds for the Patent Office to restore the payment deadline, and thus the right to the trademark may lapse.
Big fish doesn’t care
It should be added that in respect of enterprises holding a large portfolio of registered trademarks, monitoring by the Patent Office of the deadline for an enterprise to submit the fee for renewing trademark protection will be a minor issue. In general, such companies are represented before the Office by an attorney to whom official correspondence is forwarded. In such cases, the Patent Office’s practices will not change how things are done, because each patent attorney representing a client is obliged, unless the parties decide otherwise, to inform the client by a fixed time of the fees to be paid and to submit an order for payment to be made. This is also why, particularly from the point of view of large enterprises with trademarks that have been registered for years and which have penetrated the consciousness of consumers, these new aspects of the Patent Office’s operation essentially change nothing.
In the context of the examples given, a question arises. Should an enterprise whose objective is effective protection of its industrial property dismiss an attorney who has supported it in that aim? Or is it perhaps better to cooperate with a specialist whose knowledge and experience you can always count on? The answer seems clear.