World Intellectual Property Organization

Renewal of an international registration


Does the holder of an international registration (or his representative) receive a notice prior to the expiry date of the international registration?

Yes. Six months before the expiry date, the International Bureau sends an unofficial notice to remind the holder and his representative, if any, of the exact date of expiry. If, however, the holder or his representative does not receive said notice, this does not constitute an excuse for failure to comply with any time limit for payment of the fees due.

How do I renew my international registration?

You have three options:

  • you can send a communication to that effect, provided that you mention the international registration number and the relevant designated Contracting Parties for which you want to renew your trademark and pay the renewal fees; or
  • you can use form MM11 and pay the renewal fees; or
  • you can renew on-line your international registration and pay the renewal fees.

The Fee Calculator may be used to calculate the amount of fees due for the renewal.

How many times can I renew an international registration?

An international registration can be renewed indefinitely.

Following a change in ownership, the Office of the Contracting Party of the new holder is not the same as the Office of origin. Which Office should be indicated on the Fee Calculator when calculating renewal fees?

The Office of the Contracting Party of the new holder should be indicated.

Can I modify my international registration when I renew it?

No. Since renewal is considered to be a simple prolongation of the period of protection of an international registration, it may not include any change in relation to the international registration in its latest form. A request to change the name of the holder, the representative, an address, etc. should be made on the relevant form(s) and sent to the International Bureau before the request for renewal.

If you present a request for subsequent designation before the renewal date of an international registration, the fees paid for the subsequent designation are valid only until that renewal date. For the subsequent designation to take effect after the renewal of an international registration, you should tick box (a) in paragraph 7 of form MM4.

I did not indicate on the renewal form all the countries I wanted to renew

If an international registration has been renewed in respect of only some of the designated Contracting Parties and the holder decides, after the due date, to renew a designated Contracting Party not covered by the renewal already effected, this may be done through a so-called “ complementary renewal”, provided that the grace period of six months has not expired. A surcharge (50% of the amount of the basic fee) for renewal during the grace period must be paid.

Can I renew my international registration for a designated Contracting Party which has refused protection?

Yes. If a refusal is recorded in the International Register with respect to a particular Contracting Party for all the goods and services covered by the international registration, the holder may nevertheless request the renewal of his international registration with respect to that Contracting Party. The reason for allowing a renewal of a Contracting Party that has pronounced a refusal is that, at the time of renewal, there may still be pending a judicial or administrative procedure in respect of such refusal. The rights of the holder need to be preserved where the refusal was the subject of an appeal and no final decision had been taken by the date on which the renewal was due. A designated Contracting Party which has pronounced a refusal is of course free to determine the effects in its territory of such a renewal.

Can I renew an international registration designating only one Contracting Party, but which has refused protection?

Yes.

I renewed my international registration for a Contracting Party which has refused protection. Can I cancel this renewal?

No. The renewal as such cannot be cancelled and no reimbursement of fees is possible.

Do I need to renew classes which have been limited?

Yes, because the recording of a limitation is not a cancellation of the classes concerned. The sole effect is that the international registration is no longer protected for the goods and services concerned in the Contracting Parties covered by the limitation. Even if a limitation has been recorded for all the designated Contracting Parties, the goods and services which have been the subject of that limitation may later be the subject of a subsequent designation.  Renewal fees must therefore also cover those classes.

Will payment for renewal be accepted if it is sent on the expiry date of the international registration?

In principle, the payment of the renewal fees must actually be in the WIPO bank or postal account on the expiry date of the international registration.

What happens in case of late payment?

A late payment will be taken into account only if the renewal fees are in the WIPO bank or postal account within the so-called grace period (i.e., 6 months after the expiry of the international registration). In that case, a surcharge (50% of the amount of the basic fee) will be required.

Do I need to renew the national basic mark upon which is based my international registration?

An international registration is dependent on the national basic mark for a period of five years following the recordal date of the international registration. After this five-year period, the international registration becomes independent of the basic mark. It is therefore not necessary, after this five-year period, to renew the national basic mark in order to continue validity of the international registration, but be advised that the international registration never extends its protection to the country upon which it is originally based.

I requested renewal of my international registration but have not yet received the renewal certificate

Although requests for renewal can be sent to the International Bureau several months before the expiry date of the international registration, the renewal will be recorded in the International Register on the date on which the current period of protection expires. The renewal certificate will only be issued after that expiry date and will be sent only to the holder or his representative recorded in the International Register.

I requested renewal of my client’s international registration but have not received the renewal certificate

An international registration is renewed upon payment of the relevant fees, irrespective of the author of the payment. Payment of the renewal fees by a third party does not imply the recording in the International Register of the appointment of the author of the payment as the representative of the holder of the international registration concerned nor the delivery of the renewal certificate to this person. The renewal certificate will only be issued after the expiry date of an international registration and will be sent only to the holder or his representative recorded in the International Register. To be appointed as representative, you should complete form MM12.

Can I obtain a copy of the renewal certificate?

The International Bureau may issue certified copies of the renewal certificate. These copies will be issued against the payment of a fee of 50 Swiss francs per certified copy. For further information click here.

Can an international registration which has expired be restored?

Only within the six-month grace period following the expiry date. Once this grace period has ended, the international registration lapses due to non-renewal and is no longer valid.

Explore WIPO