If you registered a trademark abroad, in order to maintain trademark validity it is necessary to follow trademark extension procedure and pay state fees. In most countries, the validity of a trademark is ten years. Accordingly, the renewal must be carried out during the ninth year after the trademark registration. However, some countries have additional trademark requirements.
What is the Trademark Extension?
International Trademark Registration (Madrid System Registration) is valid for 10 years. The trademark renewal for another 10 years can be done until the international registration expired. Please note that it is not necessary to renew the international registration in all countries previously declared in the Madrid application. However, international registration must be renewed for all categories and subcategories. If the copyright holder of the TM wants to exclude part of the categories or subcategories from the registration, it is necessary to submit a separate application for canceling registration for these types of activities.
To extend the international registration, the owner must apply to WIPO with the corresponding application, as well as pay the state fee. The cost of the trademark renewal fee depends on the number and specific list of countries where the registration will be prolonged. Direct your attention that in certain national departments it may be necessary to provide evidence that the trademark is used by its owner in the territory of the corresponding state.
Why renew the Trademark?
Brand extension is important if you want to retain the rights to it. After 10 years and the absence of applications for renewal, the trademark will be considered free, and it may be registered by someone else. Make sure that competitors do not receive your mark just because you didn’t care about the trademark renewal process in advance. The copyright holder of a trademark can extend it an unlimited number, subject to all the rules and deadlines for submitting documents.
Frequently asked questions
The following are some essential questions that the owners of trademarks often ask.
Q. How to extend the trademark registered abroad?
A. By analogy with the international trademark registration, the brand extension is carried out with the assistance of patent attorneys. A copyright holder who is not a resident of the country of TM registration is not entitled to apply to the national patent office independently. Depending on the country where the trademark is registered, a different set of documents may be required. The costs of renewing a trademark will also depend on the territory of covering.
Q. What is the validity period and requirements for trademark extension in the UK?
A. The initial validity period of the trademark is 10 years from the date of applying. Despite the fact that you can extend the validity of your trademark indefinitely, in order to maintain its validity, it is necessary to renew it every next 10 years from the moment of filing the application. This procedure is not obligatory but should be done if you want to continue using your mark. The cost of renewing a brand in one category in the UK is £200 and £50 for each subsequent class. If you do not use the registered trademark within five years from the date of registration or have stopped using it for 5 years or more, anyone can apply to remove your trademark from the state registry. Also, you can cancel a trademark at any time.
Q. What is specific of new brand extension in the United States?
A. In the USA, in addition to extending the validity of a trademark every 10 years, it is also necessary to submit to the Patent Office a declaration on the use of a trademark (Declaration of Use) or a declaration on the non-use of a trademark for a good reason (Excusable Non-Use) within the following periods:
- For the 5th year after the registration of a trademark in the United States.
- For the 10th year after the registration of a trademark in the United States.
- For each subsequent 10th year of the trademark’s validity in the United States.
If you have an intention to use a TM in commerce but need more time for it a trademark statement of use extension should be prepared and filed.
It is important to keep in mind that if a trademark is registered in the United States using the Madrid Protocol (based on international registration), the period for renewal is calculated from the date of the international registration, and the deadline for filing declarations is from the date of registration of a trademark in the United States. These dates can not match.
Is it successful?
In general, the process isn’t so complicated and in most cases successful. The main reasons for refusing to renew trademarks are missing the trademark renewal period deadline and submitting an incomplete or incorrectly prepared set of documents. However, there are cases when the renewal of registration of a trademark was refused due to the loss of the distinctive ability of the mark itself, as well as due to the non-use of the trademark by its owner.
What documents are needed?
Renewal of registration can be started during the last year of the validity of a trademark certificate by contacting WIPO directly. The trademark owner must apply directly to the WIPO service. The deadline is sufficiently long, before the end of legal protection and, additionally, before the end of the grace period (six months after the certificate is suspended). Also, trademark renewal service often sends a written reminder to the mark owner and its representative about the possibility of renewing the registration six months before its expiration.
It’s possible to submit a request to WIPO for international trademark registration extension using the e-Renewal electronic service or by mail using the valid MM11 forms for paper specified on the official website. The application must contain the following information:
- International Trademark Registration Number.
- Listing of the countries where the extension of a TM is required.
- Information on paid trademark renewal fees.
The procedure for renewing international registration does not require confirmation of a trademark in all states listed in the documents of the Madrid application. The choice of countries where renewal is required is determined only by the owner of the mark. An extension for the list of products and services indicated during registration shall be declared in the application as well. For exclusion from the international registration of ICGS categories (subcategories), a separate application must be submitted with a request for cancellation of this type of activity in the registration.
How much does this process cost?
All payments for WIPO services are paid in Swiss francs (CHF). The total trademark renewal fee consists of the main parts:
- a basic fee: 653 CHF;
- a supplementary fee for each class over three: 100 CHF per class;
- a complimentary fee: 100 CHF for each country where the extension of the mark is requested.
In addition, an individual fee set in a country member of the Madrid System may be charged. Therefore, the trademark renewal cost can be different depending on the territory of legal protection. The term for consideration of an application for extension is two months.