When changes are made regarding a trademark, a recordal must be filed on the appropriate intellectual property (IP) register. Changes such as alterations to a mark, license agreements and changes in ownership, among others, all require recordals to be filed on the register. If these changes are not recorded in a timely manner, it could result in legal issues in cases where your IP is being challenged.
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Given the numerous circumstances which can trigger the need for IP recordals the requirement to file them occurs relatively frequently. However, many businesses choose to delay the filing of recordals so that they eventually run into the time for renewals and simply file all respective paperwork at the same time. This therefore begs the question, is it correct to carry out Intellectual Property recordals with your renewals process?
Why wait until your renewal?
Updating IP recordals can take time, money, and other resources away from your day-to-day operations. Many businesses consciously choose to delay the filing of their recordals until their renewal date so that all can be filed together. Generally, the rationale for doing so is that the recordals-renewals processes will be cheaper and take less time if completed simultaneously than if they were done at their respectively required dates.
However, there is little proof to suggest that this belief is true. Rather, the two processes will cost the same in official and agent fees regardless of whether they are completed simultaneously or at their respective dates. Moreover, carrying out IP recordals with your renewals runs the risk of creating a much more difficult and burdensome task than simply doing the two separately. Managing the process means ensuring that renewal reminders, renewal filings, payments and recordal updates are all carefully monitored and effectively executed. Carrying out renewals in tandem with recordals requires significant resources to complete them both effectively without negatively impacting your business.
Waiting until the renewal period to file any Intellectual Property recordals can prove disastrous for your IP, as discrepancies on your IP records can substantially interfere with other existing rights. Inaccuracies as to the true owner or nature of a trademark, or the existence of an unrecorded license agreement can lead to difficulties in enforcing your ownership rights against third party infringers as well as wreaking havoc with ongoing license or royalty agreements.
A typical renewal process may take longer than an IP recordal. Additionally, renewal issues can have a greater immediate impact on a business, for example, if a trademark is cancelled due to a missed deadline. Bearing this in mind, the timely processing of a recordal may suffer as a result of issues with renewals. As such, it’s important to designate the necessary resources to ensure that neither process is adversely impacted by unforeseen circumstances.
However, a benefit to carrying out IP recordals along with your renewals is that all impending work will be completed at the same time – with one organizational project your portfolio can be tidied and updated so as to prevent any future issues which could result from discrepancies. In order to determine what the best course of action is for your business, it’s worth consulting with an IP expert, who can free you from the administrative burden of managing recordals and advise you on when it’s optimal to file recordals with renewals.
Balancing act
Ultimately, a balancing act must be undertaken when deciding whether to carry out Intellectual Property recordals with your renewals – a consideration of the aforementioned potential risks weighed against the benefits of doing so.
However, given that the potential risks of carrying out your IP recordals with your renewals only apply if you delay your recordals project so that it aligns with your renewals, choosing to carry out the two together where they naturally align imposes no risks. Indeed, where completing the two together does not require your recordals to be unduly delayed, carrying them out at the same time as your renewals can prove beneficial.
Resulting in an organised and up to date record, carrying out your Intellectual Property recordals along with your renewals will mean that you need not consider undertaking any more updates to your portfolio until further changes to your IP are made again. Having both your recordals and renewals done together can give you the peace of mind that your IP is receiving the utmost protection, and should any issues arise, your updated and organized record will serve to aid you in any ensuing legal matters.
However, although completing both your recordals and renewals together can prove beneficial where the dates naturally align, the work involved in completing such a process can still be difficult. Staying on top of the required documentation, updates, and reporting can be an overwhelming administrative burden on a business as it requires a significant investment of their time and resources. It is therefore recommended that, if seeking to carry out both your IP recordals and renewals at the same time you seek the advice of an external IP expert, who will ensure that both processes are completed promptly and completely.
In summary, the ostensible benefits of completing both your Intellectual Property recordals and renewals together, namely a financial and time-saving, do not hold much sway. However, completing the two together can prove beneficial in terms of ensuring that your portfolio and records are organized and updated to ensure that your IP is protected to its utmost. It is not advised that you delay the filing of your IP recordals to carry them out with your renewals, as doing so can leave you liable to diminished rights protections and other issues. However, where the dates for completing both recordals and renewals align it can prove extremely beneficial to complete them together.
