Renewing International Trademark Registrations: Procedures and Advantages

If your brand operates across borders, you already know that protecting a trademark in one country offers little comfort when competitors in other markets can freely copy your identity. The Madrid System, administered by WIPO, was built precisely to address this challenge – and one of its most practically important features is the renewal mechanism. A single renewal request filed with WIPO can keep your trademark protected across dozens of countries simultaneously. Understanding how this works – including the timelines, fees, flexibility, and strategic options available – is essential for any trademark owner managing an international brand portfolio.

The foundation: a 10-year term of protection
When and how to renew
The grace period and its surcharge
Understanding the renewal fee structure
The flexibility to choose countries for renewal
What happens after renewal is recorded
Renewal versus maintaining national registrations
The “replacement” feature: an added layer of efficiency
Why this renewal mechanism matters for Indian businesses

The foundation: a 10-year term of protection

Every international registration under the Madrid System is granted an initial term of 10 years from the date of registration. This applies uniformly across all designated member countries – there is no need to track separate expiry dates for each jurisdiction. As confirmed in CGPDTM’s official guidelines, an international registration subsists for 10 years and may be renewed indefinitely by paying the renewal fee before the expiry of each 10-year period. This indefinite renewability is a significant advantage – unlike patents, which have a fixed lifespan, a trademark can be maintained perpetually as long as the owner actively renews it and continues using the mark in commerce.

For Indian businesses and trademark owners who have designated India in their international registration, the renewal is handled entirely at the WIPO level. As clarified by IP practitioners familiar with the Indian system, a renewal application concerning a Madrid registration designating India needs to be made only at WIPO, and WIPO subsequently notifies the Indian Trade Marks Office. This removes any burden on the applicant to separately approach the Controller General of Patents, Designs and Trademarks (CGPDTM).

When and how to renew

According to WIPO’s official guidance, you can renew your international trademark registration at the earliest six months before the 10-year term expires. This advance renewal window gives trademark owners sufficient time to prepare and submit their requests without the pressure of a hard deadline. The preferred method is through eMadrid, WIPO’s online self-service portal, which streamlines the entire process. Alternatively, owners can submit a renewal request using the paper-based Form MM11, though WIPO strongly recommends the online route for speed and convenience.

Shortly before the renewal due date, WIPO will send an unofficial notice confirming the expiry date of the registration. This is only an informal reminder – it does not trigger any procedural obligation on its own. Trademark owners should not rely solely on this notice to manage their renewal calendar. As highlighted by international IP law practitioners, WIPO does not guarantee delivery of reminders about renewal deadlines, making it critical to have a reliable internal tracking system or to work with an IP attorney who monitors these dates proactively.

The grace period and its surcharge

If the renewal is not filed before the registration expires, a six-month grace period follows the expiry date during which the owner can still renew the registration and prevent it from lapsing entirely. However, this comes at a cost. Renewing during the grace period attracts a 50% surcharge on the basic renewal fee. WIPO’s renewal page makes clear that this surcharge is in addition to all other applicable fees and is non-negotiable. For most registrations, this means an additional 326.50 Swiss francs on top of the standard renewal fees. Allowing a registration to slip into the grace period is therefore both a financial and administrative risk, and should be avoided wherever possible.

Understanding the renewal fee structure

The renewal fee under the Madrid System is not a single flat charge. It is composed of several components, and the final amount depends on the specific countries designated for renewal and the number of classes of goods and services covered. A detailed breakdown of the fee structure includes the following elements:

The basic renewal fee forms the baseline of the payment. On top of that, an individual fee is payable for each designated country that has opted to charge its own fee in place of the standard complementary fee – this varies country by country. For countries that do not charge an individual fee, a complementary fee of 100 Swiss francs per designated member applies. Additionally, a supplementary fee of 100 Swiss francs per class of goods and services beyond the first three is levied, but only in cases where the complementary fee is applicable. If the renewal is filed during the grace period, the 50% surcharge on the basic fee is added to this total. WIPO’s eMadrid Fee Calculator can be used to generate an accurate estimate before submitting the renewal request.

All fees must be paid directly to WIPO’s International Bureau in Swiss francs. Payment can be made by credit card or through a WIPO current account when using the online eMadrid portal.

The flexibility to choose countries for renewal

One of the most strategically important features of the renewal process is the owner’s ability to select which designated countries to renew and which to drop. The Madrid System does not require you to renew protection in all previously designated countries. This means trademark owners can tailor their renewal to reflect current business priorities.

For example, if an Indian company originally designated 20 countries when it first filed its international registration but has since wound down operations in five of those markets, it can simply not renew protection in those five countries while retaining it in the remaining fifteen. This selective approach avoids paying unnecessary renewal fees for territories where the mark no longer has commercial relevance. As noted in legal commentary on the renewal process, if the grace period has expired and the owner later wishes to re-include a country that was excluded at renewal, they would need to file a new subsequent designation for that country under a separate procedure – so the decision to drop a country should be made carefully.

It is important to note that renewal cannot be made for goods, services, or designated member countries in which the registration has already been subject to invalidation, renunciation, or cancellation. The renewal request must accurately reflect the current scope of protection remaining in the International Register.

What happens after renewal is recorded

Once WIPO verifies that the renewal request meets all formal requirements – including full payment of the applicable fees – the renewal is recorded in the International Register. WIPO then issues a Certificate of Renewal to the holder. The registration continues to carry the same date of protection across all designated countries, with a fresh 10-year term running from the expiry of the previous one.

Importantly, the renewal does not automatically carry over any changes the owner may wish to make to the registration – such as updates to the holder’s name or address, amendments to the list of goods and services, or transfers of ownership. Practitioners advise that such changes should be recorded through separate procedures before the renewal date so they are accurately reflected when the renewed registration takes effect.

Renewal versus maintaining national registrations

One procedural nuance that trademark owners – particularly those managing portfolios in India – should be aware of is the distinction between renewing the international registration and maintaining national-level protections in individual member countries. While renewal at WIPO covers the international registration globally, as the USPTO has noted for its own jurisdiction, some member countries have additional post-registration maintenance requirements under their domestic trademark laws – such as declarations of use or separate national filings. These requirements exist independently of the Madrid renewal and must be addressed with the local IP office concerned.

This does not diminish the efficiency of the Madrid System’s renewal process – it simply means that for certain key markets, owners should verify whether any local maintenance obligations apply. WIPO’s Member Profiles Database is a useful tool for checking country-specific requirements before the renewal period.

The “replacement” feature: an added layer of efficiency

The Madrid System also offers a related feature called “replacement”, which is relevant to the renewal discussion. According to WIPO, when an international registration covers countries where the owner also holds national or regional registrations, the international registration automatically replaces those national registrations. This means the owner can allow the national registrations to lapse at renewal while retaining the earlier date of protection through the international registration – reducing administrative overhead and consolidating renewal obligations into a single WIPO-level filing.

This is particularly relevant for Indian brand owners who may have first registered their trademark with the Indian Trade Marks Office and later obtained international protection designating India through the Madrid System. Once the replacement takes effect, there is no need to separately renew the national Indian registration – the international registration covers India’s territorial protection from the date of the original national registration.

Why this renewal mechanism matters for Indian businesses

India acceded to the Madrid Protocol on April 8, 2013, with its provisions coming into force on July 8, 2013. Since then, Indian businesses – from large multinationals to growing startups with global ambitions – have increasingly used the Madrid System to protect their brands internationally. The Trade Marks (Amendment) Act, 2010 incorporated Chapter IVA into the Trade Marks Act, 1999, to align Indian law with the Protocol’s requirements.

The renewal mechanism, with its single-point filing at WIPO, is one of the most tangible day-to-day advantages for Indian trademark owners. Instead of managing separate renewal timelines, different fee structures, and local agents across every country where the mark is registered, the owner deals with one deadline, one process, and one set of fees in a single currency. As the CGPDTM and EUIPO jointly highlighted in their guidance booklet, there is only one expiry date and only one registration to renew under this system – a significant administrative simplification that reduces both cost and risk of lapse.

For Indian businesses actively exporting to markets in Europe, the United States, Southeast Asia, or elsewhere, maintaining continuous trademark protection in those territories is not a formality – it is a legal and commercial necessity. A lapsed registration can open the door to third-party filings, brand impersonation, and loss of priority rights. The Madrid System’s streamlined renewal process ensures that vigilant trademark owners can maintain that protection indefinitely with minimal procedural friction.

What do you think? If you were advising an Indian startup expanding to international markets, how would you explain the trade-off between renewing protection in all originally designated countries versus selectively dropping markets at renewal time? And given that WIPO’s renewal reminders are unofficial and not guaranteed, what internal systems or professional safeguards would you consider essential to prevent an inadvertent lapse in international trademark protection?

References

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Table of Contents

The foundation: a 10-year term of protection 🔗

When and how to renew 🔗

The grace period and its surcharge 🔗

Understanding the renewal fee structure 🔗

The flexibility to choose countries for renewal 🔗

What happens after renewal is recorded 🔗

Renewal versus maintaining national registrations 🔗

The “replacement” feature: an added layer of efficiency 🔗

Why this renewal mechanism matters for Indian businesses 🔗