Global integration has brought many challenges for international businesses besides opportunities, especially trademark protection overseas. In Vietnam, many Vietnamese businesses have more and more recognized the benefits of trademark protection under the Madrid system, leading to a significant increase in the number of International Registrations originating from Vietnam recently. Upon obtaining International Registration, one of the essential issues that should be of concern to the holder of International Registration is the period of validity.
Under the Madrid system, International Registration will only be valid for a certain period. Therefore, the holder must conduct the renewal procedure to ensure the continued validity of the International Registration. This article will provide some regulations and issues related to the renewal of international registration under the Madrid System.
- Period of Validity of an International Registration: The registration of trademark will last 10 years from the date of the International Registration, with no limitation to the number of times that an International Registration can be renewed every 10 years.
- How to request for a renewal of the International Registration: There are two ways to presenting the request for renewal, specifically as follows:
(i) Online: The holder of the International Registration can use the Online Renewal service, which is available on WIPO’s website.
(ii) Offline: The holder can renew the International Registration by submitting the form MM11, along with other documents required by the domestic process (such as in Vietnam, Form No. 08-SĐQT) directly to the National Office of Intellectual Property.
- Time for requesting for renewal: The time for requesting for renewal can be executed within the following timeline:
(i) from 03 months before the date of expiry of the International Registration;
(ii) to the 06 months following the date of expiry of the International Registration (as known as the grace period).
- Renewal Fee: The renewal fee shall consist of the following fees:
(i) Basic fee: 653 Swiss francs;
(ii) Individual fee: depending on each designated country concerned (please see the Contracting Country’s declaration on the individual fee at WIPO’s website);
(iii) Complementary fee (for each designated country for which no individual fee is required): 100 Swiss francs;
(iv) Supplementary fee (except if the designated country has declared for its individual fee): 100 Swiss francs for each class of goods and services in excess of three;
(v) Surcharge for the use of the grace period: 50% of the basic fee for renewal. Currently, the surchage fee amounts to 326.50 Swiss francs.
For the accuracy in the calculation of the renewal fee, please visit the Fee Calculator available on WIPO’s website.
- How to pay the Renewal Fee: The fees should be paid directly to the International Bureau. However, if the IP Office of the holder’s country agrees to collect and forward such fees to the International Bureau, then the renewal fee can be paid through that Office.
When the holder pays the renewal fee through the WIPO’s Online Renewal service, the renewal fee can be paid by credit card or debited from the WIPO current account.
- Changes to the International Registration at the renewal time: If the holder wishes to record any changes, such as changes in the name/address/information of the holder or the list of goods and services, to the International Registration, then the holder must conduct separately the applicable relevant procedures. It is recommended that the holder make the changes before the renewal due date to ensure those changes will be recorded in the International Register and reflected at the renewal time.
- Changes to the number of Designated countries: In essence, the holder can decide not to renew the International Registration for one or more of the designated countries during the renewal procedure. Within the six months grace period, the holder has the right to decide to include the designated country that was not included in the renewal, provided that the International Registration covered such country in the first place.
However, if the grace period is expired and the holder wishes to include the used-to-be designated country but was not included in the renewal, the holder would need to subsequently designate that country under the applicable procedures.
- Renewal fees in some specific cases at the renewal time:
(i) Invalidations, renunciations, cancellations and limitations: When it comes to those cases, the holder cannot renew the International Registration for goods and services that have been cancelled or for designated members for which a total invalidation or renunciation has been recorded.
Moreover, in the case of a partial invalidation, a limitation of the list of goods and services with respect to a particular member, or a partial cancellation with respect to all designated members, the International Registration also cannot be renewed for the goods and services to which the invalidation, limitation or cancellation relate. In those cases, no renewal fee is charged.
(ii) Partial Grant of Protection or Total Refusal of Protection: The situation is different when it comes to the partial grant of protection or the total refusal of protection. This can be attributed to the fact that the holder still has the right to contest the Office’s decision under the law of the designated country. Therefore, if the appeal is still pending at the time of the renewal of the International Registration, the holder can renew the International Registration for designated countries that have granted protection to only some of the goods and services (Partial Grant of Protection) or that have refused protection for all the goods and services concerned (Total Refusal of Protection).
If the holder decides to appeal such decision, then at the time of the renewal:
- Partial grant of protection: The holder is required to pay individual fees only for the classes for which protection has been granted, and not for all the classes covered by the designation.
- Total refusal of protection: The holder shall include the designated countries (that have refused protection) in the renewal and pay for all the goods and services that have been totally refused.
(iii) Provisional Refusal of Protection: It is possible to renew an international registration for designated members that have provisionally refused protection. However, the holder shall pay the renewal fee for all the goods and services covered by the designation, regardless of the fact that a provisional refusal may concern all or some of the goods and services.
- Last but not least, an important note for the holder to minimize the renewal fee is that the renewal fee applies the same for all designation contained in the International Registration, irrespective of the date on which the designations were recorded. Thus, if the expiry of the International Registration is near, it is recommended that the holder, if possible, should wait until after the renewal is recorded before subsequently designating additional countries.