How to renew your trade mark in Australia before it expires

The renewal deadline for your registered trade mark arrives on a date you may not be tracking: the 10th anniversary of the day you filed the application, not the day the mark was registered. In the 12 months before that anniversary you can renew the registration for another decade, but the window closes quietly. IP Australia will not give you much notice. Its reminder notice is only sent in the final two months before renewal is due, so by the time the official reminder lands you have little room to manoeuvre.

If you renew in time, your registration continues for another 10 years from the expiry date, your filing date and priority position carry over, and your exclusive rights to use the mark for the goods and services you registered remain intact. Renewal is a short administrative process that you can complete online in minutes. It also has sharp edges: renew too late and you fall into a six-month grace period that costs extra and leaves you exposed; renew not at all and the registration lapses and the rights that came with it are gone.

What you need before you start

Before you begin, tick off the following:

• Your expiry date: Your registration expires 10 years after the filing date of your application under s 72 of the Trade Marks Act 1995 (Cth). Find it in IP Australia's Australian Trade Mark Search or on your registration certificate. This is the one date the whole process turns on, so do not proceed until you have it.
• A decision to renew: Confirm the mark still earns its keep for at least some of the goods or services it covers. If your business has rebranded or dropped a product line, decide whether to renew at all, and which classes you want to keep.
• The renewal fee: Budget $400 per class for online renewal, or $450 per class by other payment methods, per IP Australia's trade mark fees. A registration covering three classes costs $1,200 online.
• Access to IP Australia online services: You can create a customer account on the online services portal if you do not already have one. A registered trade mark attorney can act on your behalf instead.
• Current contact details: The renewal notice goes to the address IP Australia holds for the registered owner, so confirm your details are current before the window opens.

The items that trip people up are the first and the last. Owners routinely overestimate how much notice they will get, and they discover the reminder went to an old email address or a dissolved company once the window has already closed.

The renewal process step by step

Find your expiry date and put it in your calendar

Your registration is taken to have effect from the filing date of your application, and it expires 10 years after that date (s 72 and s 80B of the Trade Marks Act 1995 (Cth)). Note what this means in practice: because examination and registration can take months, your effective protection may run for less than a full decade from the day you were registered. Do not count from the registration date.

IP Australia's reminder is a safety net, not a plan. Under reg 7.4 of the Trade Marks Regulations 1995 (Cth), the notice of renewal due is given in the two months ending on the expiry day. That leaves no time for second thoughts, so diarise the expiry date now, set an alert for 12 months before it, and treat the reminder as a backstop.

Decide whether the registration is still worth keeping

Renewal is not automatic and it is not compulsory. It is a commercial decision made against your current business:

• Continuing relevance: Does the mark still identify goods or services you actually sell or plan to sell?
• Value for money: Is the brand still valuable enough to justify the fee for every class you hold?
• Competitive risk: Would a competitor file for the same or a similar mark if your registration lapsed?

If you only use the mark for part of what is registered, you can ask IP Australia to amend the Register to remove the goods or services you no longer need. The Registrar may make that amendment at your written request under s 83(1)(b) of the Trade Marks Act 1995 (Cth). Trimming unused classes before you renew means you only pay renewal fees for protection you actually use.

There is a further reason to review use now. Under s 92 of the Trade Marks Act 1995 (Cth), a third party can apply to remove your mark from the Register if it has not been used in Australia for a continuous period of three years. Renewing does not cure that exposure. If the mark has sat unused, take advice before spending the fee.

File your renewal request through IP Australia online services

A request for renewal can be made at any time in the 12 months ending on the expiry day (reg 7.3 of the Trade Marks Regulations 1995 (Cth), made under s 75 of the Trade Marks Act 1995 (Cth)). The quickest path is IP Australia's online services portal. Have the following to hand:

• your online services login;
• the trade mark number you are renewing;
• the list of classes the registration covers; and
• a payment method for the fee.

Then log in, locate the trade mark in your portfolio, select the renewal option, confirm the classes to be renewed, and pay. IP Australia advises that renewal through online services is effective immediately, and there is no limit on the number of times a trade mark can be renewed. Each renewal adds 10 years from the day the registration would otherwise have expired (s 77 of the Trade Marks Act 1995 (Cth)), so your term never resets or shortens.

One point that surprises owners: renewing early does not cost more. Under reg 21.21(2) of the Trade Marks Regulations 1995 (Cth), the fee payable for a renewal requested before expiry is the fee that would have been payable on the expiry day itself. There is no financial reason to wait until the last month of the window, and every reason not to.

Pay the renewal fee

The fee is set by IP Australia and charged per class:

• $400 per class: when you pay through online services.
• $450 per class: when you pay by other methods, such as posting a completed renewal request form.

If your registration covers several classes, multiply accordingly. Fees change from time to time, so check the current schedule before you pay. Do not assume the renewal has happened because you asked for it: the registration is only renewed once the request and the fee are both dealt with. Online renewal is effective immediately, while postal renewals take longer, which is one reason the online route is the sensible default.

If you missed the deadline: use the six-month grace period

If the expiry day passes without renewal, you are not immediately out of rights. Under s 79 of the Trade Marks Act 1995 (Cth), the Registrar must renew the registration if a request is made within six months after it expired, and the renewed registration runs for 10 years from the expiry day. Your priority date is preserved.

The grace period is not free:

• You pay the renewal fee that would have been payable at expiry, plus a late fee of $100 for each month, or part of a month, that passes before you pay (reg 21.21 of the Trade Marks Regulations 1995 (Cth) and IP Australia's renewal guidance).
• A renewal that is 12 days late, for example, attracts $100 on top of the standard fee. If your registration expired on 1 March and you renew on 20 May, you pay the standard fee plus $300, being three months of late fees.

The greater cost is exposure. During the grace period your registration has lapsed in a practical sense: IP Australia warns that if you do not renew within the period, your rights lapse and the protection that came with registration is lost. Enforcement against an infringer is risky while your registration is technically expired, and a third party can file for the same or a similar mark in the meantime. Under s 80 of the Trade Marks Act 1995 (Cth), your unrenewed mark still counts as a registered mark against a competitor's application while the grace period is open, but that only helps if you actually renew. Treat the grace period as damage control, not as an extension of the window.

Audit your trade mark use and update your details

With renewal done, close the loop:

• Check how you use the mark: Use it as registered, for the goods and services registered, so it cannot be attacked for non-use under s 92 of the Trade Marks Act 1995 (Cth).
• Update your contact details: Future renewal notices, opposition documents and other official correspondence follow the address on the Register. Update them through online services.
• Record the renewal: Keep the receipt or confirmation with your IP records so the next renewal in 10 years is easy to find.

Where renewals typically get held up

Renewals most often stall for a small set of predictable reasons:

• Relying on the reminder: The official notice only arrives two months before expiry. If your contact details are stale, it may never arrive at all. Diarise the date yourself.
• Waiting for the last month of the window: Renewal is immediate and the fee is the same whenever you act in the 12-month window, so there is no upside to delay and real downside if something goes wrong with the payment.
• Renewing without checking the classes: You pay per class, so an unexamined registration can cost you thousands to protect goods you no longer sell. Trim the Register first.
• Assuming the grace period is a free pass: The late fee accrues monthly, and every day of the grace period is a day your protection is in doubt. Treat it as an emergency exit.

When to bring in a trade mark attorney

You can renew a straightforward registration yourself in a few minutes. Professional help earns its keep in the situations where the process stops being routine:

• Portfolio review: An attorney can map your expiry dates, flag marks that are vulnerable to non-use removal, and advise on which registrations and classes are commercially worth keeping.
• Trimming and amending registrations: Preparing a request under s 83(1)(b) of the Trade Marks Act 1995 (Cth) to remove unused goods or services, and advising on whether changes are safe, is lawyer work.
• Acting on your behalf: An attorney can lodge the renewal, monitor confirmations, and chase anything that does not go through.
• Lapsed registrations: If the grace period has passed, the mark is off the Register and the rights are gone. An attorney can assess whether a fresh application will succeed, whether a competitor has filed in the gap, and how to minimise the damage to your priority position.
• Ownership issues: If the business that owns the mark has changed entity or traded names, the ownership on the Register must match reality. An attorney can check and fix this before the next renewal window.

The expiry date is the date that matters most

Every part of this process is measured from a single date: the day your trade mark registration expires, 10 years after you filed the application. Get that date into your calendar now. IP Australia's reminder arrives only two months before expiry, the 12-month renewal window and the six-month grace period are both counted backwards and forwards from the expiry day, and the fee structure rewards early action and punishes delay. Miss the grace period and you do not simply pay more: the registration lapses, the rights that came with it are lost, and the only way back is a fresh application that is examined from scratch and takes its priority from a new filing date. A competitor may have filed in the gap.

The good news is that renewal itself is quick, cheap relative to the value at stake, and can be done online in minutes. Keep your expiry date diarised, review what you actually use before you pay, renew early in the 12-month window, and treat the grace period as the emergency exit it is. If your registration is already in trouble, or your portfolio has grown beyond what you can track yourself, a trade mark attorney can take the process off your hands before the clock runs out.