Trademark renewal grace period shortened

The Trademarks Amendment Act 2006 (Cth) has brought about a change in relation to the trademark renewal grace period in Australia.

Previously, trademark registrations that had expired could be renewed (upon payment of extension fees) up to 12 months after the expiry of the registration. In contrast, a six-month renewal grace period is allowed under the Patents Act 1990 (Cth) and the Designs Act 2003 (Cth). Such inconsistencies caused considerable confusion among users which owned multiple types of intellectual property. Therefore, amendments to Sections 78 and 79 of the Trademarks Act 1995 (Cth) have reduced the renewal grace period for trademark registrations to six months, bringing it into line with not only the renewal grace period for Australian patents and designs, but also the Madrid Protocol.

The amendments will apply only to those marks whose registration expires at least 12 months after the commencement of the amendments (March 27 2007). Therefore, the new grace period of six months will apply to registrations falling due for renewal on or after March 27 2008. For marks whose registration expires before March 27 2008, there will still be a period of 12 months from the expiry date in which to renew the registration.

The amendments increase the burden on trademark owners to monitor carefully the renewal dates of their trademark registrations. Although restoration of registrations after the renewal grace period is possible in some circumstances, the registrar of trademarks must be satisfied that such a restoration is justified, and significant fees are payable.

However, the amendments may also benefit trademark applicants by streamlining the examination phase of applications. In Australia, an applicant can apply to defer the acceptance of an application if a registration which has expired (but is still within the statutory restoration period) is cited as a prior mark during examination. The deferment suspends the application until the cited registration is either renewed or removed from the official Register of Trademarks at the expiry of the restoration period. The new renewal grace period of six months will significantly reduce the waiting time and uncertainty in relation to expired cited prior registrations.

Mark Williams, Allens Arthur Robinson, Australia