- What trade mark renewal is, and why it exists
- Who does what: the owner, the Registrar and everyone else
- The ten-year clock: when your registration actually expires
- Missed the date: the six-month grace period
- After the grace period: lapse and removal from the register
- Where renewals usually go wrong
- When a trade marks lawyer or attorney earns their keep
- The date you are really protecting is your filing date
What trade mark renewal is, and why it exists
A registered trade mark is a property right. While it stays on the Australian Trade Marks Register, the registered owner holds the exclusive right to use the mark for the goods and services it covers, and can take infringement action against a trader who uses a substantially identical or deceptively similar mark without permission. That right is not indefinite. The Trade Marks Act 1995 (Cth) (the Act) fixes a term on every registration, and once that term ends the registration expires and the mark can be removed from the register.
Renewal is the mechanism that keeps the right alive. It lets the owner pay a fee and extend the registration for another term, without having to re-apply, re-run examination, or re-argue whether the mark is registrable. In effect, renewal is how the register distinguishes marks that are still commercially in use from those whose owners have moved on.
The topic becomes relevant to most businesses about ten years after they first file. For a startup that registered early, that often lands mid-growth, at the worst possible time to be distracted by admin. This article walks through the mechanics of renewal in Australia: who does what, when each deadline bites, what each stage produces, and where owners commonly get caught out.
Who does what: the owner, the Registrar and everyone else
Trade mark renewal in Australia is a small cast of players, and each has a distinct role:
- Registered owner: the entity recorded on the register as owning the mark. It is the owner's responsibility to renew on time, keep contact details current, and pay the official fees. The owner can act directly or through an authorised agent.
- IP Australia and the Registrar of Trade Marks: the government agency that administers the register. The Registrar processes renewal requests, issues reminder notices, records changes to the register, and removes marks that are not renewed. In the legislation the Registrar's functions sit in the Trade Marks Act 1995 (Cth).
- Trade marks attorney or lawyer: an adviser who monitors renewal dates, checks the register against the business's actual ownership and use, lodges renewals on the owner's behalf, and steps in when something has gone wrong, such as a missed deadline or a change of ownership that was never recorded.
- Third parties: competitors and other traders can inspect the register, and they can apply to have a mark removed for non-use. A lapsed registration also opens the door for someone else to file for the same name.
The interests of the owner and IP Australia largely align: the owner wants the mark kept alive, and the Registrar wants the register to accurately reflect who owns what. The friction usually comes from the owner's side, when renewals fall through the cracks of an otherwise busy business.
The ten-year clock: when your registration actually expires
The starting point is that an Australian trade mark registration expires ten years after the application's filing date, not ten years after the day it was registered. Under s 72 of the Trade Marks Act 1995 (Cth), the registration "expires 10 years after the filing date in respect of the application for its registration", unless it is cancelled or removed earlier.
That distinction matters. The period between filing and registration can stretch out over a year or more, so the expiry date is almost never a round anniversary of the certificate. The correct expiry date is the one on the register, not the one you guess from memory.
When renewal is granted, the clock restarts from the expiry date, not from the day you lodge the renewal. Under s 77, the Registrar must renew the registration "for a period of 10 years from the day on which the registration of the trade mark would expire if it were not renewed". There is no limit on how many times a mark can be renewed, so a well-maintained registration can run indefinitely.
A worked example: a mark filed on 1 June 2015 expires on 1 June 2025. A renewal lodged in early 2025 extends the registration to 1 June 2035. Renew again before that date and it runs to 2045, and so on.
This is the frame that makes renewal feel less like a chore: what you are really paying to preserve is the original filing date, which is the date that decides priority against anyone who later files for a similar mark.
The renewal window: the year before expiry
The Trade Marks Act allows a renewal request to be made "within the prescribed period before the registration of a trade mark expires" under s 75, and IP Australia's guidance is that a trade mark "can be renewed up to a year before the renewal due date". So the practical window is the twelve months leading up to expiry.
The mechanics are straightforward. The request must be in an approved form and filed with IP Australia, either through its online services or by post using the request-for-renewal form. Online renewals take effect immediately. IP Australia sends a reminder notice two months before the renewal is due, which is the point where most owners first notice the deadline.
Renewal is per class of goods and services
A trade mark is registered in respect of specific classes of goods and services, and the official fee is charged per class. Under IP Australia's current schedule the renewal fee is AUD 400 per class paid through online services, or AUD 450 per class by other payment methods. A mark registered across two classes therefore costs AUD 800 to renew online.
The per-class structure is worth understanding before you renew, because renewing every class you once filed for is not always the right call. If the specification includes classes the business never traded in, keeping them alive costs money every decade and can leave the registration exposed to a non-use challenge in those classes. Renewal is a natural moment to review whether the class coverage still matches the business, and to discuss with an adviser whether any classes can be trimmed or whether new ones are needed for products or services launched since filing.
Missed the date: the six-month grace period
If the renewal date passes without payment, the registration does not vanish immediately. The Trade Marks Act provides a statutory grace period. Under s 79, a person may ask the Registrar to renew the registration within six months after it has expired, and the Registrar must then renew it for ten years from the expiry date. IP Australia charges an additional AUD 100 for each month, or part of a month, that the fee is late. A renewal lodged twelve days after the due date therefore attracts an extra AUD 100 on top of the standard fee.
During the grace period the registration has in one sense already ceased, because s 78 provides that if a mark is not renewed before expiry, the registration "ceases to have effect when it expires". The grace period is a window to reverse that outcome, not a period of continued protection.
There are two consequences of relying on the grace period that owners rarely know about.
First, even a successful late renewal leaves an enforcement gap. Under s 128 of the Act, if a registration is renewed within the six-month grace period, an infringement action may not be brought in respect of an act that infringed the mark but was done after expiry and before the renewal. In plain terms, if a competitor launched a copycat product during your lapse, you cannot sue them for that period even though you later renewed. This is the hidden cost of a late renewal: it keeps the mark alive, but the protection has a hole in it.
Second, the unrenewed mark still blocks later filers during the grace period. Under s 80, an unrenewed trade mark is taken to be a registered mark for the purpose of examination of other applications while it could still be renewed under s 79. So a competitor who files for your mark during your grace period will have their application rejected against your unrenewed registration, provided you renew in time.
After the grace period: lapse and removal from the register
Once the six-month grace period ends without renewal, the outcome is final. Under s 78, unless the registration is renewed within the grace period, the Registrar must remove the trade mark from the register six months after the day the registration expired. IP Australia's own guidance states that if you do not renew within the grace period, "your rights will lapse and your IP will no longer be protected".
The Trade Marks Act has no general restoration mechanism for a registration that lapses for non-renewal. The restoration provisions that exist in the legislation are narrow and do not apply to this situation. The practical remedy, if the mark still matters, is to file a fresh application for the same mark. That means accepting all of the following:
- a new filing date, which resets priority against anyone else who filed for a similar mark in the meantime;
- a fresh examination, including the possibility that the mark is now rejected against another registration that did not exist when the original was examined;
- a new ten-year clock, and a new period of opposition before registration;
- a gap in enforceable protection from the lapse until the new registration, during which the business cannot sue for infringement and must rely on passing off and misleading conduct claims if anything goes wrong.
There is a further catch. The moment the mark is removed, the name is available. A competitor who has been watching the register can file for the mark immediately, and if they do, your fresh application is the one that faces rejection.
This is why the grace period should be treated as a backstop, not as a plan. Missing a renewal by a few days is recoverable at the cost of a late fee. Missing it by more than six months is, for practical purposes, the loss of the registration.
Where renewals usually go wrong
Most renewal problems do not come from the filing itself. They come from the state of the register not matching the state of the business:
- Owner details that are out of date: the mark may still be registered to a founder's personal name, a former company, or the entity that existed before a restructure. Renewal does not fix the ownership record, and a mismatch creates real problems at sale, in licensing deals, and when the mark needs to be enforced. A change of ownership can be recorded with IP Australia, and renewal is a sensible checkpoint to arrange it.
- Non-use exposure: under s 92 of the Trade Marks Act 1995 (Cth), a third party can apply to have a mark removed from the register if it has not been used in good faith in Australia for a continuous period of three years. Renewal is a good moment to confirm the mark is genuinely in use for the goods and services it covers, and to gather evidence of that use.
- Business name confusion: registering a business name with ASIC is not the same as holding a trade mark. A business name records who trades under a name; it does not give exclusive rights to the name itself. Renewal is the wrong time to discover that the protection the business assumed it had was never there.
- Coverage that no longer fits: renewal only extends the classes already on the register. Launching new products, new services, or new channels since the last renewal usually means new classes are needed, and renewal alone will not cover them.
- Contact details on file with IP Australia: if reminder notices go to an old email address or a previous accountant, the two-month reminder is never seen. Keeping the address for service current is cheap insurance.
When a trade marks lawyer or attorney earns their keep
For a single mark with a simple ownership history, renewing directly with IP Australia is genuinely straightforward. The value of professional help appears at the edges of the process, and there are several points where a practitioner changes the outcome.
A trade marks lawyer or attorney can monitor the whole portfolio so that deadlines do not depend on one person's inbox, verify that the registered owner matches the entity that actually owns and uses the brand, and arrange for ownership changes to be recorded before renewal rather than after a dispute. They can review the class specification against the current business model, flag classes that are dead weight or gaps that need new filings, and advise on whether a lapsed mark is worth a fresh application or whether the brand should be retired and replaced. If a deadline has been missed, they can assess where the mark sits in the grace period and what can still be salvaged, and if enforcement is on the table, they can explain how any lapse affects the ability to sue.
The cost of that involvement is modest measured against what is at stake. The official fee for renewing a single-class mark online is AUD 400, and professional fees for portfolio management are typically a fraction of the value of the brand being protected.
The date you are really protecting is your filing date
The most valuable thing in a trade mark file is not the certificate. It is the filing date, because that is the date that decides who gets the mark when two traders want the same name. Every renewal is, in substance, a payment to keep that priority date alive for another ten years.
The mechanics are forgiving once: a missed renewal date can be cured within six months for an extra AUD 100 per month, and the mark continues to block later applications while the grace period runs. But the forgiveness is finite. After the grace period closes, the registration ceases, the mark is removed from the register, and there is no restoration path. Rebuilding from a fresh application resets priority, re-opens examination, and hands competitors a six-month-plus head start on a name you may have spent a decade building.
The practical answer for most businesses is to take the deadline out of the realm of memory. Put every mark on a monitored renewal calendar, keep the address for service current, and treat the year-before-expiry window as the moment to check ownership, use, and class coverage. If the portfolio has grown beyond a single mark, or the structure of the business has changed since filing, that is the point where a short conversation with a trade marks lawyer is worth having, and a free initial consultation is a cheap way to find out whether your renewals are genuinely in order.