A trademark is one of the most important intellectual assets of any business and plays a vital role in attracting customers and marketing. In simple terms, a trademark is a sign that distinguishes the goods or services of a natural or legal person from those offered by others. Such marks not only indicate the quality of a person’s or an entity’s goods or services, but also play a fundamental role in building customer trust, creating distinction in the market, and preserving the reputation of the trademark owner.
Nevertheless, many business owners mistakenly assume that trademark registration is permanent. In reality, the legal validity of a trademark is limited to a specific period and requires renewal within the prescribed statutory time limit. Failure to renew a trademark may result in serious legal and economic consequences, some of which may be irreversible.
What Is Trademark Renewal and Why Is It Important?
Trademark renewal means maintaining the legal validity of a registered trademark after the expiration of its protection period. Under the intellectual property legal system, the legislator has determined a specific term of protection for trademarks, and once this period expires, the trademark owner must submit a renewal application in order to continue enjoying legal protection.
The importance of trademark renewal lies in the fact that the exclusive rights of the trademark owner—such as the exclusive right of use, the right to prevent others from using identical or confusingly similar marks, and the right to bring legal action against infringers—are enforceable only if the trademark registration remains valid. If the trademark is not renewed, these rights are lost and the trademark falls outside the scope of legal protection.
Term of Validity of Trademark Registration
Pursuant to Article 111 of the Act on the Protection of Industrial Property (2024), the term of validity of a trademark registration certificate is ten (10) years from the filing date of the application. If the owner of a registered trademark wishes to renew it, they must submit a renewal application for another consecutive term and pay the relevant fees within six months prior to the expiration of the trademark’s validity period.
Therefore, although Article 11 specifies a ten-year protection period, in practice, a registered trademark may be used continuously and indefinitely, provided that renewal fees are paid within the statutory time limits. For this reason, timely renewal of a trademark is of particular importance, and failure to do so will lead to serious consequences, as discussed below.
Trademark Renewal Deadline and Procedure
As previously noted, the continuation of legal protection for a trademark after the expiration of the ten-year period is contingent upon renewal and payment of the prescribed fees. Under the Iranian legal system, the trademark owner may submit a renewal application during the final six months of the validity period. In addition, a six-month grace period following the expiration date is provided, during which renewal is still possible upon payment of a surcharge equivalent to half of the registration fee.
In summary, the trademark renewal process includes the following steps:
- Filing a renewal application through the Intellectual Property Office’s online system
- Payment of the statutory renewal fees
- Formal examination of the application by the Office’s experts
- Renewal of the trademark and recording the renewal in the official trademark records
Required Documents for Trademark Renewal
Required Documents for Renewal by Natural Persons:
- Copy of the trademark owner’s ID card
- Copy of the trademark registration certificate
- Image of the registered trademark
- Power of attorney (if the renewal application is submitted by a lawyer)
Required Documents for Renewal by Legal Entities:
- Copy of the ID card of the authorized signatories
- Copy of the company’s latest official notice of changes
- Copy of the trademark registration certificate
- Power of attorney (if the renewal application is submitted by a lawyer)
What Are the Consequences of Failing to Renew a Trademark?
There have been differing opinions among legal scholars and in judicial practice regarding the legal consequences of failing to renew a trademark. Some believe that if the protection period of a trademark expires and the owner, intentionally or unintentionally, fails to renew it, this does not necessarily mean that all rights of the trademark owner are forfeited or that the trademark becomes invalid and freely available for registration or use by others.
Others, however, argue that once the trademark registration period expires and is not renewed in a timely manner by the trademark holder, the holder’s rights are completely extinguished, and any person may acquire exclusive rights by registering the same trademark.
It appears that this ambiguity has been resolved by Advisory Opinion No. 624/1402/7 dated 06 October 2024. According to this opinion, if a trademark registration is not renewed within the ten-year term and the additional six-month grace period, the registration loses its legal validity, the exclusive rights of the trademark owner are extinguished, and other persons may apply to register the trademark in their own name.
This may be considered the most significant consequence of failing to renew a trademark. In effect, after this period, the trademark enters the public domain, and any person may create new legal rights for themselves by re-registering the same or a similar trademark.
From a commercial perspective, failure to renew a trademark may lead to a decrease in brand value and weaken the commercial reputation of its owner, thereby reducing the trust of customers and market participants. Moreover, since agreements related to a trademark—such as trademark assignment agreements or licensing agreements—may only be concluded by the holder of exclusive rights, failure to renew the trademark and the resulting loss of exclusive rights deprives the owner of the ability to enter into such agreements.
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As demonstrated above, trademark renewal is a simple yet vital measure for preserving the validity of a trademark and the exclusive rights arising from it. Accordingly, trademark owners are strongly advised to carefully monitor the validity period of their registered trademarks and complete the renewal process within the prescribed statutory deadlines, rather than postponing it until the final days.
Given the importance of trademark renewal and the potential problems resulting from failure to renew, seeking guidance from experienced attorneys or legal institutions specializing in intellectual property law can play a significant role in preventing legal risks and safeguarding intellectual assets.
Our consultants at Razvanian International are always available to answer your questions regarding trademark renewal and other related matters. For further information, please contact us.
office@rezvanianinternational.com
+98-21-88863094
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