The WIPO is in charge of the Madrid Protocol, which is a cost-effective way to protect your trademark internationally. All you need is to file the trademark on the bases of the trademark in the country of your citizenship / incorporation (depending on the type of the owner) and to get accepted by the Trademark Offices of the designated countries, and here you go, your trademark is protected for the next 10 years.
But when it comes to the end of the registration period what shall you do to renew it and enjoy the benefits of your ownership over the brand?
Here are the tips you need to follow to renew your Madrid trademark with the WIPO.
The WIPO will send an unofficial notice to the holder of the trademark or its recorded representative six-month before the due date, confirming the date of expiry of the international registration. Therefore, there is no need to constantly monitor the status of the trademark and you can put all your efforts into developing and expanding your business.
A WIPO trademark renewal can be done at the earliest 3 months before the 10-year term of protection expires, or within the 6-month grace period following its expiry. Though, you need to remember that you must pay a 50% surcharge if you renew your international trademark registration during the six-month grace period following expiry.
Secondly, the payment of the WIPO trademark renewal fee can be done by bank transfer or by a credit card if you have an account on the WIPO website which allows trademark owners to choose the preferred option depending on the amount of the renewal.
In case the bank transfer payment is preferable, you will need to request your renewal by submitting the form MM11 via Contact Madrid. The following information should be included in the request: the international registration number concerned, the designated Contracting Parties for which the renewal is requested and the details of the payment.
WIPO strongly recommends that the owners of the trademark do the renewal online through eMadrid. You need to log on to your WIPO account or create one and proceed with the renewal. Additionally, you can hire us, we charge a fixed legal fee of US$150 for submitting a WIPO trademark renewal form.
Please remember that trademark cannot be renewed only for some of the countries it covers or in the specific classes.You cannot drop any country or class if you do not need them and proceed only with the crucial ones for your business.
If you want to renew your international registration only for some services or goods it is required to request a recording of the limitation or cancellation of the classes before the renewal of the WIPO trademark.
The WIPO will need time to record the changes in the international register and to issue a renewal certificate.
•a basic fee (653 Swiss francs); plus
•an individual fee (variable) for each designated Madrid System member (applies only to those members listed under declaration (c) concerning Article 8(7)(a) of the Madrid Protocol); and/or
•a complementary fee (100 Swiss francs) for each Madrid System member not listed under declaration (c); and
•a supplementary fee (100 Swiss francs) for each class of goods and services in excess of three (applies only if a complementary fee is payable, i.e., if some of the designated members do not charge an individual fee) .
The renewal fee can be calculated using the Fee calculator or a Madrid E-Renewal service.
In summary, you need to remember there is only one renewal date of the international registration and failure to renew the registration will cause the abandonment of your international trademark in all designated countries.
The WIPO will also grant you a grace period of six months following the due date to renew the application, in case you could not pay the renewal fees before the due date, however, you will have to pay an additional 50% surcharge of the basic fee (653 CHF x 0.5 = 326.5 CHF).
Therefore, once you receive the unofficial notice from WIPO, you need to be ready to pay all the required fees within three months before the due date to avoid any issues with the international Madrid trademark registration and additional expenses.
Bonamark can help you timely renew your WIPO trademarks. Contact us at [email protected] for more details.
Author: Ed Fedorovich, our WIPO specialist. Ed works at Bonamark since 2019 and participated in hundreds of trademark cases in many countries. He is especially fond of the Madrid Protocol and helps new businesses extend their marks to foreign countries.