Manage and renew your international trade mark

Changes to your trade mark can cause the ceasing of effect of your international trademark. If this occurs you may wish to apply directly to other countries to retain your rights to you trade mark. This is called transformation.

Your trade mark will be due for renewal after a period of ten years. The World Intellectual Property Organization (WIPO) fee calculator can help you work out the costs of renewal.

Changes to your trade mark

We are responsible for monitoring your trade mark activity and for notifying the International Bureau if you make certain changes to your basic trade mark within the first five years from lodgment of your international trademark.. This five year period is known as the dependency period. Changes you make within this period can cause the ceasing of effect of your international trade mark.

Changes that will result in us notifying the International Bureau include your trade mark:

  • lapsing

  • being refused or withdrawn

  • being amended to a narrower range of goods and/or services than originally applied for

  • being removed because it was not renewed

  • being removed because of a non-use action

  • being cancelled or expunged by order of a court.

When the International Bureau receives such a notification it will cancel the international registration to the same extent and update its records.

The International Bureau will notify the holder and the relevant designated countries of the cancellation.

Note: If an action has started within the first five years that results in basic trade mark Intellectual Property (IP) rights ceasing, for example non-use or court action, we will still notify the International Bureau even if the action finishes after the five-year period has lapsed.

Transformation

You may be able to retain your rights in the individual designated countries by requesting the international registration be converted to a national application. This is called a transformation request.

Transformation is possible where we have notified the International Bureau about a ceasing of effect. The request to transform must be filed directly to the designated office within three months of the ceasing of effect being recorded on the international register (ROMARIN).

Note: The three-month time period starts from the date the international registration is cancelled, not from the date of the basic trade mark ceasing of effect.

It is up to each contracting party to work out the requirements for transformation into a national or regional application in their country. This includes working out what costs may apply and what requirements exist for processing a transformation - as these will vary between each designated office. You will need to contact the designated country office for any further information on the transformation process in that country.

If the transformation application is made within the three-month period, the national application will have the filing date of the international registration.

Renew your international trade mark

Under the Madrid System, renewal of international registrations is due ten years from the registration date. This is the date recorded by the International Bureau.

The International Bureau notifies you, as the trade mark holder, or your representative (such as your lawyer) six months before the expiry date.

All designated countries on an international registration will have the same date of renewal. This is the date of the first instance of filing. The renewal date will not change for subsequently designated countries.

Renewal fees payable

Renewal fees must be paid directly to WIPO and payment can be made using the e-renewal system. WIPO's fee calculator will help to calculate the renewal fees payable.

The renewal fees are subject to change depending on when payment is made.

Where payment is made three months (or less) before the date on which renewal is due, the fee that is valid on the date that you pay will apply. This will be the date the payment for the renewal is received into WIPO's bank account. Any pending changes to individual fees will need to be taken into account when the calculation is made.

Where the fee is paid earlier than three months before your renewal is due the fee that is valid three months before the due date will apply.

Where the renewal fee is paid after the due date, the fee that was valid on the due date will apply (plus the late surcharge).

Late payment of renewal

Payment can still be made up to six months after the date on which the renewal was due, provided that a surcharge (half of WIPO's basic fee for renewal) is paid with the request to renew.

Lodging request to renew

You can lodge payment with WIPO using the e-renewal system or by completing WIPO's MM11 form (renewal of the international registration, lodging directly to WIPO) .

The WIPO fee calculator can be used to determine the fees.

Payment must be deposited into WIPO's bank account in order for it to be considered as received. 

Last updated: 
18 March 2016