Have you ever thought about your trademarks when office relocation is on the agenda?
In fact, it is rather uncommon that a corporate operates in the same premises forever. It could well be that your business has outgrown your current space, or that you need to move closer to your biggest clients or a certain government bureau. And now, the COVID-19 pandemic offers a new meaning for “offices” and continues to pave the way for work from home. Zoom meetings one after another have become a daily routine for many of us, and WFH appears to be an unstoppable trend with no return. In this era of change, it has never been so crucial for you than now to define and image your future headquarters, either for your survival or the next big leap, and relocation of your office could be imminent.
Whether and how to relocate your office is of course a big commercial decision for you. You will have to look after and give weight to the interests of different stakeholders such as employees and clients, and to determine whether the short-term relocation costs could justify the long-term benefit of your company. While certainly there are bigger things that need to factor in before you decide to move (and you can easily obtain a lot more information from internet surfing), rarely will someone tell you to be mindful about your trademarks, to our surprise. There are at least three reasons why trademark is something you should not take lightly in the relocation exercise:-
1. Updating the Trademark Register Could Cost You a Fortune
It is natural that you want to update outsiders about your office relocation in an official and timely manner. Many companies will prepare and issue a relocation notice to inform their vendors and clients. Inevitably you will need to attend the banks and governmental bureau to update your office address. Likewise, you are also obliged to inform the Trademark Office about the new office address to update the trademark register accordingly.
The costs for attending the change of address per mark per class are not concerningly high, which range from US$200.00 to US$500.00 in most jurisdictions, in our experience. However, it will be a very different story if hundreds of trademarks are owned. Assuming you have three brands, each registered in four classes in ten jurisdictions, even with an average modest cost of US$300.00 per mark per class for updating the address, such a simple exercise will cost you US$36,000.00 (3x4x10x300), which is by no means insignificant. Please always factor in the update of the trademark address when doing your homework of the cost-benefit analysis of office relocation.
2. Failing to update your trademark could be RISKY!
You may question if the trademark register must be timely updated, as there is no fine or penalty to be imposed and that it is almost impossible for the trademark offices to check and update the information of millions of trademark registrations regularly. It should purely be your own choice whether to update your address on the trademark registers or not.
But this would be like playing chess only one or two moves deep. Address basically serves two purposes, i.e. identification of your identity and as a means of correspondence with you. The latter is particularly important for your DIY trademark applications. You can imagine those trademark offices or other third parties will need to communicate with you at times. For example, a third party may want to inform you that it wants to revoke your registered trademark, or some trademark offices may want to remind you that the registered trademark is due for renewal. Presuming your address is not yet timely updated, it is still fine if you have engaged an agent for trademark filings, as they can communicate with your agent. Contrastingly, if you self-file your trademark applications, failure to update your office address simply signifies the total breakdown of communications. At worst, failure to respond to a third party’s aggressive actions may lead to the cancellation of your registered trademarks (without being noticed).
3. Filing the New Address or Short Postponement for the New Trademarks
A good IP agent should be cost-conscious as if the money you spent were from its own pocket. Equally, it is simply mind-blowing if you do not take care of your money wisely if you DIY your trademark applications.
Now you are now in the process of relocating your office, expecting to move into the new office in a month’s time. Incidentally, your marketing manager proposes a new line of products requiring filing one trademark in a few classes in a few jurisdictions. If you file the new trademarks with the old address, you will need to incur extra costs to update the address one month later.
In such circumstances, you better try to push for a quick update on the official documents for your office address before new trademark filings. More aggressively, you may even consider filing the new trademarks with your new address. Alternatively, if possible, postpone your trademark filings.
We hope that “trademarks” will spring into your mind when you next relocate your office.
#Trasomark
#Relocation
#Trademarkapplication
#Changeofaddress
#Cost-effectiveness
