When refiling is a better option than renewing

Every renewal period, a trademark becomes susceptible to cancellation due to non-use if it has not been used for all or some protected goods or services. This is a good time to assess its future in the context of the market and a firm’s long-term strategy. Of course, if the mark is being used, renewal is almost certainly the best way forward. However, if the mark has not been in use, partially or at all, but one still wishes to retain ownership for potential future use, a better approach might be to file a new application. Although the new application would have a later priority date than the original, there would be no disruption to its protection as continuity is upheld.

Advantages of this strategy include:

  • the owner would in any case have to finance the renewal of the right, and those funds would be better served further securing its portfolio;
  • the new application would not have to be identical, and could better represent the way the mark is currently being used;
  • the owner’s name and address could be updated at the same time without incurring any extra charges;
  • the listed goods and services could be altered; and possessing an IP right that is not in use for five years after the registration date or from the date of last known use leaves the owner vulnerable to a cancellation action; further the mark cannot be the basis of an opposition against a later right.

Renewing out-of-use trademarks in Serbia and Kosovo

In Serbia, the IP Office examines new applications on both absolute but also relative grounds for refusal, meaning that there is a much higher chances of an unused trademark being the subject of a motion for cancellation due to non-use compared with other jurisdictions.

In Kosovo, it is crucial to consider the high possibility of local firms or individuals filing applications for trademarks that are identical to those of well-known brands that have not yet broken into the market, with the intention of selling the marks to these well-known brands.

As the older unused trademark right cannot be a proper basis for an opposition in such cases, cancellations due to non-use are frequent.

This puts trademark owners in a precarious position. On the one hand, the socio-economic and political conditions do not support large investments (eg, hotel or market chains) and the market itself is small and too impoverished for luxury items. On the other hand, if such trademarks have been protected and not used, the owner easily falls into a trap – potentially being extorted in a jurisdiction that is not a part of any international IP agreements and that heavily protects its own citizens. For these reasons, refiling – or even letting a registration lapse – can be the wiser option.

This is an Insight article, written by a selected partner as part of WTR's co-published content. Read more on Insight

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