Trademark maintenance actions around the world
The purpose of this white paper is to introduce the different types of trademark maintenance actions and their terms of protection in order to provide an overview of when, where and how they need to be filed.
When talking about maintaining a trademark right, most people immediately think of a renewal. However, maintaining a trademark may also consist of other actions beside a renewal that need to be taken in order to keep a trademark alive. There are actually five types of maintenance:
- Cautionary Notice
- Affidavit of Use
- Proof Renewal of Basic Registration.
The renewal per se consists of filing an application with the respective Trademark Office in the form of a document that needs to show the relevant trademark and owner data. Such renewal applications have to be filed in all countries except in Eritrea, Comoro Islands, Maldives, Myanmar, Palau, Nauru and East Timor, where cautionary notices have to be filed. Cautionary Notices are advertisements in local newspapers by which the trademark owners state that they own the mark and that no third party may therefore use a similar or identical mark.
These notices are subsequently filed with the TM Office which, if a trademark law exists, issues a renewal certificate. If not, the outside counsel will provide a cutting of the advertisement only.
About the author
Maryse Heirend: Over the past 20 years, Maryse has been driving the process of creation and consolidation of the Trademark Renewals department at Dennemeyer. She has been managing, structuring and developing the department, including staff of 17 multilingual and experienced trademark renewal specialists in Luxembourg. With the staff’s support, Maryse is continuously seeking to improve workflows and adapt the trademark renewals processes to the growing demand on the international market.