The moment a mark’s first renewal deadline arrives, as well as each subsequent one, is when the mark in question has potentially become suspect of invalidation due to non-use, if not is not used for any or all of the protected products or services.
The timing of renewal is always a good point to assess the future of said brand in the context of the market itself and the future strategy of the company.
Of course, if used, renewal is almost certainly the best way to go.
However, if the record has not been used in whole or in part, but the owner wishes to continue to have it in their portfolio due to potential future strategies, a better course of action might be to re-apply. instead of renewing this existing unused right.
In IP, the idea of priority is very important, but in this approach, although the new application has a new and more recent priority date than the one already established – there would be no interruption in protection, which is significant , because the continuity is maintained.
Some advantages are:
– the owner would have outgoing expenses at that time anyway (for renewal), and these would be better served to further secure their TM portfolio;
– the new application does not have to be identical and can better represent the way the mark is used;
– the name and address of the owner can be updated at the same time, in the event of a change, at no additional cost;
– in addition, the list of goods and services may be modified.
– above all, owning an intellectual property right that is not used (for 5 years after the date of registration or from the date of last known use) is less useful, because it can be canceled successfully and does not cannot be the basis of an opposition against a subsequent right.
This is particularly important to consider with unused registrations in Serbia and Kosovo.
In Serbia, the IPO examines a new application on an absolute basis but also for relative reasons for refusal, which means that there is a much higher chance that your unused mark will be subject to a request for cancellation for non-use, compared to other jurisdictions.
In Kosovoit is important to consider the strong possibility that applications for trademarks identical to major brands that have not yet entered the market will be filed by local companies or individuals – with the intention of selling them to these major brands.
Since the older, but unused trademark right cannot form a suitable basis for opposition in these cases, cancellations for non-use are common.
This places brand owners in less than ideal conditions – on the one hand, the socio-economic and political situation does not support large investments, such as developing hotel or market chains and the market itself. same is small and too impoverished for luxury items (think very expensive cars for example), but on the other hand, if these marks have been protected and not used, the owner easily falls into a trap – potentially extorted in a jurisdiction that is not part of any international intellectual property agreement and strongly protects its own citizens.