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.

Introduction

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:

  • Renewal
  • Cautionary Notice
  • Tax
  • 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.