Guide to the International Registration of Marks

Part B: Chapter II

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CHAPTER II: THE INTERNATIONAL PROCEDURE

RENEWAL OF INTERNATIONAL REGISTRATION

Renewal Following Refusal or Invalidation
International Registrations Effected before the Entry into Force of the Common Regulations
Procedure for Renewal

Fees for Renewal
Renewal Fees following Change in Applicable Treaty
Insufficient Fees Paid
Recording of the Renewal; Notification, Certificate and Publication
Complementary Renewal

Non-Renewal

[Also in PART B, CHAPTER II:

Renewal of International Registration

P Article 6(1)
P Article 7(1)

70.01 Under the Protocol, registration of a mark at the International Bureau is effected for a period of 10 years. It is then renewable for a further 10 years upon payment of the required fees.

A Article 6(1)
A Article 7(1)
Rule 10
Rule 30(4)

70.02 Under the Agreement, registration of a mark is effected for a period of 20 years, and is then renewable for a further 20 years upon payment of the required fees. Under the Regulations however, the fees must be paid in two installments of 10 years. The requirements and provisions concerning payment of the second installment are the same as for renewal. For all practical purposes therefore, it is simplest to regard the second installment as a renewal fee.

Renewal Following Refusal or Invalidation

Rule 30(2)(b)

70.03 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 payment of the renewal fees must however be accompanied by an express statement that the renewal is to be recorded in respect of that Contracting Party. The reason for allowing a renewal with respect to 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.

Rule 19(1)

Rule 30(2)(c)

70.04 The situation is different with respect to an invalidation, since the recording of an invalidation in the International Register must mean that the invalidation is no longer subject to appeal. The international registration therefore may not be renewed with respect to a Contracting Party for which a total invalidation has been recorded. Nor may it be renewed with respect to a Contracting Party for which a renunciation of protection has been recorded. Nor, in the case of a partial invalidation, a limitation of the list of goods and services with respect to a particular Contracting Party, or a partial cancellation with respect to all designated Contracting Parties, may renewal be effected with respect to those goods and services to which the invalidation, limitation or cancellation relate.

International Registrations Effected before the Entry into Force of the Common Regulations

Rule 40(2)(c)

71.01 In the case of an international registration effected before the entry into force of the Common Regulations (i.e., April 1, 1996):

- where the fees were paid for 20 years, no further fees were due until the expiry of that period (except in the case where there had been a subsequent designation, see below); renewal fees would then have been due (for 10 years) under the Common Regulations;

- where the fees were paid for a first installment of 10 years and the balance for the remainder of the 20-year period had not been paid before the entry into force of the Common Regulations, renewal fees would have been due, under the Common Regulations, at the expiry of the first 10-year period.

Rule 40(3)

71.02 Where, after the entry into force of the Common Regulations, a subsequent designation was made in respect of an international registration for which the requisite fees had been paid for a period of 20 years, and the effective date of the subsequent designation fell within the first 10 years (i.e., between April 1, 1996, and March 31, 2006) of this period, the complementary or individual fees paid at the time of the subsequent designation covered only the period up to the end of the first 10 years. At the end of that period, a further complementary or individual fee would have had to be paid in respect of the Contracting Party concerned by this subsequent designation. The procedure concerning the payment of that fee was the same as for a normal renewal (see paragraphs B.II.72.01 to 72.04).

Procedure for Renewal

A Article 7(4) P Article 7(3) Rule 29	72.01 Six months before expiry of each 10-year term of protection, the International Bureau, by sending an unofficial notice, reminds the holder of the international registration and his representative (if any) of the exact date of expiry. If however the holder (or representative) does not receive such unofficial notice, this does not constitute an excuse for failure to comply with any time limit for payment of the fees due. The unofficial notice will list all the designated Contracting Parties in respect of which no total refusal or invalidation is recorded in the International Register, or which have not been renounced.
Article 7(2)	72.02 Since renewal is considered to be a simple prolongation of the period of protection of the international registration against payment of the necessary fees, it may not include any change in relation to the international registration in its latest form, that is at the expiry of the current period of protection. Therefore, no change in the name or address of the holder or in the list of goods and services may be made as part of the renewal procedure. Any such changes which the holder wishes to have recorded in the International Register when the registration is renewed must be communicated separately to the International Bureau according to the applicable procedures. They will be included in the data recorded at renewal only if they are recorded in the International Register not later than the date of expiry of the international registration (see paragraph B.II.76.03).
Rule 30(2)(a) Rule 30(2)(d)	72.03 The international registration may however be renewed for some only of the Contracting Parties covered. This is not regarded as a change which, according to Article 7(2) of the Agreement and Article 7(2) of the Protocol, may not be included in the renewal. In that case the payment of fees must be accompanied by a statement listing the Contracting Parties for which no renewal is to be recorded.
	72.04 A system for electronic renewal of international registrations is available on the WIPO website and can be accessed under Forms and also under Online Services on the Madrid System webpage. No official form is prescribed for the renewal of an international registration. Renewal may be effected by any communication giving the necessary information (number(s) of the international registration(s) concerned and purpose of the payment). Holders may however find it convenient to use the optional form (MM11) which is sent by the International Bureau to the holder and the representative with the unofficial notice of expiry. This form provides for indications of: - the number of the international registration to be renewed; - the name of the holder, which must be the same as the one recorded in the International Register; - the Contracting Parties for which the renewal is requested, including the Contracting Parties in respect of which a total refusal is recorded in the International Register; - the signature of the holder or representative or of the Office through which the request for renewal is presented; - the fees being paid and the method of payment, or instructions to debit the required fees from an account with the International Bureau.

Fees for Renewal

Rule 30(1) Article 9sexies	73.01 The fees due for the renewal of an international registration consist of: - the basic fee; - an individual fee for the designation of each designated Contracting Party that has made the relevant declaration (see paragraph B.II.20.04) and is designated under the Protocol, except where that designated Contracting Party is a State bound (also) by the Agreement and the Office of origin is the Office of a State bound (also) by the Agreement (in respect of such a designation, a complementary fee is payable); - for each designated Contracting Party for which no individual fee is payable, a complementary fee; - for each class of goods and services in excess of three, a supplementary fee; where however all the designated Contracting Parties are ones in respect of which an individual fee is payable, no supplementary fees are payable.
P Article 9sexies(1)(b) Rule 30(1)	73.02 Subject to Article 9sexies(1)(b) of the Protocol, an individual fee is payable on renewal where the designated Contracting Party concerned has opted to receive individual fees and the designation of the Contracting Party is governed by the Protocol. It may happen that there has been a change of the applicable treaty governing a designation, following the recording of a change in ownership, and this may have implications on the fees paid on renewal (see paragraph B.II.60.08). If, for example, the treaty governing a designation has changed from being the Protocol to being the Agreement, then of course it is the complementary fee, rather than the possible individual fee, that would be payable in respect of the designated Contracting Party concerned, on the renewal of that international registration. The converse might occur if the change of applicable treaty were from the Agreement to the Protocol. It should be noted that there may also occur a change in the liability to pay individual fees following the recording of a change in ownership, even when there has not been a change in the applicable treaty.
Rule 1bis A Article 7(5) P Article 7(4)	73.03 It is recalled that Article 9sexies(1)(b) of the Protocol provides for a derogation from the liability to pay individual fees in the mutual relations between States that are both party to the Agreement and to the Protocol. Thus, if the State whose Office is the Office of origin is party to both treaties and the international application contains the designation of a Contracting Party that is also bound by both treaties, then, notwithstanding the fact that the latter may have opted for individual fees and that the designation in question is a designation governed by the Protocol, by virtue of Article 9sexies(1)(b), the standard fees only will be payable to that Contracting Party. If, in due course, a change in ownership is recorded in respect of that international registration and the new owner claims entitlement to be recorded as owner through a connection with a Contracting Party that is bound only by the Protocol, then, while there has not been a change of the treaty governing the designation in question - i.e., the designation is still governed by the Protocol - there will be a change in the fee regime on the renewal of that international registration. Whereas, previously, the derogation provided for in Article 9sexies(1)(b) would have applied, it will no longer do so, and individual fees will be payable on renewal.
	73.04 The fee calculator on the Trademarks/Madrid System page of WIPO's website may be used to calculate the fees payable for the renewal of an international the registration.
	73.05 The fees should be paid to the International Bureau by, at the latest, the date of expiry. Any payment received by the International Bureau earlier than three months before the due date is considered as having been received three months before that date. The payment can still be made up to six months after the date on which the renewal was due, provided that a surcharge (which amounts to 50% of the basic fee for renewal) is paid at the same time.
Rule 34(7)(d)	73.06 Where the amount of a renewal fee changes between the date on which the fee was paid to the International Bureau and the date on which renewal is due, - where payment is made not more than three months before the date on which renewal is due, it is the fee that was valid on the date of payment that is applicable; - where the fee is paid more than three months before the date on which renewal is due, the payment is considered to have been received three months before the due date, and it is the fee that was valid three months before the due date that is applicable; - where the renewal fee is paid after the due date, it is the fee that was valid on the due date that is applicable.
	73.07 The fees may be paid directly to the International Bureau by the holder. Where however the Office of the Contracting Party of the holder agrees to collect and forward such fees, the fees may instead be paid through that Office. The holder cannot however be required to pay through an Office.
Article 8(1)	73.08 Where the Office of origin accepts to collect the renewal fees and forward them to the International Bureau, that Office may fix, at its own discretion, and collect, for its own benefit, a handling fee for this service.

Renewal Fees following Change in Applicable Treaty

Rule 1bis
P Article 8(7)

73.09 A change may occur in the treaty applicable to the recorded designation of a Contracting Party bound by both the Agreement and the Protocol (see paragraphs A.02.26 to 02.31). Depending on whether or not a given Contracting Party has made the declaration for individual fees under Article 8(7) of the Protocol, there may be a change in the amount of fees payable on renewal, following a change in the treaty applicable (see also paragraph A.04.16).

Insufficient Fees Paid

Rule 30(3)(a)	74.01 If the amount of the fees received is less than the amount of the fees required, the International Bureau will notify both the holder and the representative, if any, and specify the missing amount. If the fees have been paid by a party other than the holder, his representative or an Office, the International Bureau will inform accordingly that other party.
Rule 30(3)(b)	74.02 If the amount received, after the expiry of the period of six months following the date on which renewal was due, is less than the amount required (including the surcharge for late payment), the renewal will not be recorded. The International Bureau will reimburse the amount received to the party that paid it and will notify the holder and his representative accordingly.
Rule 30(3)(c)	74.03 There is an exception, however, to the rule just explained. Where the notification referred to in paragraph B.II.74.01 was sent less than three months before the expiry of the six-month period, and the amount paid by the end of that period is at least 70% of the amount due, the International Bureau will proceed to renew the international registration. If however the full amount is not paid within three months of the notification, the International Bureau will cancel the renewal and reimburse the amount paid.
	74.04 Where the amount paid is insufficient, the holder may, instead of paying the missing amount, ask for some of the designated Contracting Parties to be omitted, thereby reducing the amount due. This request must however be made within the time within which the missing payment would have had to be made.

Recording of the Renewal; Notification, Certificate and Publication

Rule 31(1)	75.01 The International Bureau records the renewal in the International Register, with the date on which it was due, even if the fees required were paid within the grace period of six months after the due date.
Rule 31(2)	75.02 The effective date of the renewal is the same for all designations contained in the international registration, irrespective of the date on which such designations were recorded in the International Register.
Rule 31(3)	75.03 Where the international registration has been renewed, the International Bureau so notifies the Offices of the designated Contracting Parties concerned and sends a certificate to the holder.
Rule 31(4)(b)	75.04 Where an international registration is not renewed in respect of a given designated Contracting Party, the International Bureau notifies accordingly the Office concerned.
Rule 32(1)(a)(iv)	75.05 Where an international registration has been renewed, the relevant data concerning the renewal are published in the Gazette. The publication is in effect a re-publication of the international registration, in the form at which it stands after renewal.
Rule 6(3) Rule 40(4)	75.06 In general , the recording and publication will be in English, French and Spanish. However, for all international registrations resulting from applications filed before April 1, 2004, and pending the recording of the first subsequent designation: - if governed exclusively by the Agreement, French will continue as the sole language for the recording of a renewal. - if governed wholly or partly by the Protocol, French and English will continue as the languages of renewal. For international registrations resulting from applications filed between April 1, 2004, and August 31, 2008, and pending the recording of the first subsequent designation: - if governed exclusively by the Agreement, then, as above, French will continue as the sole language for the recording of renewals. (Registrations resulting from applications filed during this period and governed wholly or partly by the Protocol will enjoy the full trilingual regime, following the introduction of Spanish as from April 1, 2004, and will therefore be renewed in all three languages (see also paragraphs B.I.07.01 to 07.07).)
	75.07 An Office which is notified of the renewal (or non-renewal) of an international registration need take no action, beyond amending any records which it keeps for its own use.

Complementary Renewal

75.08 Where 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 in respect of a designated Contracting Party not covered by the renewal already effected, this may be done through a so-called "complementary renewal," provided that the period of grace of six months (see paragraph B.II.73.04) has not yet expired. The fees payable are the basic fee, a complementary or individual fee in respect of the Contracting Party concerned, and the surcharge referred to in paragraph B.II.73.04.

Non-Renewal

	76.01 If an international registration is not renewed (because the holder did not pay the renewal fees or because the fees paid were not sufficient), it lapses with effect from the date of expiry of the previous period of protection. (This is true also in the case of subsequent designations in respect of which fees due for the second installment of 10 years - see paragraph B.II.71.02 - have not been paid).
Rule 31(4)(a) Rule 32(1)(a)(xii)	76.02 Where the international registration has not been renewed, that fact is notified to the Offices of the designated Contracting Parties and is published in the Gazette. The publication consists simply of the number of the international registration and the date on which renewal was due. The notification and publication are not made until there is no longer any possibility that the international registration might be renewed, that is, it is after the expiry of the period of six months after the due date (within which period renewal was possible upon payment of a surcharge). Where the renewal has been canceled for lack of payment of the balance of renewal fees (see paragraph B.II.74.03), that fact is also published in the Gazette.
	76.03 Where the required renewal fees have not been paid by the due date, no subsequent designation and no changes may be recorded in the International Register during the period of six months after the due date within which renewal remains possible upon payment of a surcharge. It is only after renewal has been recorded in the International Register that the subsequent designation or the change may be recorded in the Register.