Mind the Gap: How to Budget for International Trademark Renewal Fees

Official trademark renewal fees, processes, and deadlines can vary substantially between jurisdictions. In this article, we explain how to tailor your approach accordingly.  

Renewing a trademark in one territory can be far more expensive than renewing it in a neighboring country. As importantly, different formalities and deadlines may apply. If your renewal is late or incomplete, you run the risk of incurring further charges in the form of late fees, which also differ by territory.

Businesses with sizable trademark portfolios can expend considerable resources keeping on top of the diverse costs, timings, and formalities. Working with a trademark renewal specialist, such as Questel, can help minimize administrative time, control costs, and mitigate the risk of missed deadlines.  

Procedural Differences in Trademark Renewal Fees

The first notable difference across territories involves the methods for applying official trademark renewal fees. Some territories, such as the UK and EU, charge a base fee for renewals—that is, one lump sum for renewing a trademark—which increases incrementally if additional charges are incurred (for example, if the owner wishes to renew their mark in multiple classes of goods or services). Other territories, such as the US, have a fee per class without a base charge.

If you file your trademark renewal past the renewal deadline, IP offices will also charge you late fees. The methods for calculating these fees also vary significantly. Some territories impose a lump sum fee, such as the US and Indian offices, while others, such as the EU, add a set percentage to the renewal fee if you file after the deadline (e.g., 25%).

In addition to the differing methods for calculating renewal and late fees, each IP office also sets its own official fee for the renewal. The cost of a renewal can vary significantly between jurisdictions, meaning it can be challenging to budget effectively for the maintenance of trademarks in multiple jurisdictions.  

Without prior knowledge of the charges that apply at each stage, you could easily be caught out by unforeseeably high trademark renewal fees when renewing your marks. What’s more, you may end up having to pay for legal assistance to help you navigate a delayed renewal application.

Evidentiary Requirements

Other procedural differences apply in terms of the documents you need to submit as part of your renewal process. For example, in some jurisdictions, you need to provide proof of use to maintain your trademark registration, even before the renewal deadline. This is the case in the US, where trademark owners must also file an affidavit confirming their use of the trademark six years after registration.  

Don’t Rely on the IP Office to Keep You Informed

Generally, trademark renewals become due every 10 years from the initial registration date. However, depending on the territory, the trademark office might not inform you of your renewal or other associated deadlines, so it’s important to keep track of your marks in different territories.  

However, keeping track of your trademarks and renewals across multiple territories over an extended period can be more challenging than it sounds. That’s why many IP owners choose to work with Questel for trademark renewal management (find out more about our service).

Seven Reasons to Outsource Trademark Renewals to Questel

Questel’s trademark renewal services relieve IP owners of all the administrative work involved in maintaining their trademark rights. Here are seven reasons to choose our services:

• 1. Data verification: We will check all trademark data to ensure that records are accurate and up-to-date, advising you if any changes need to be recorded (e.g., owner name or address) to process renewals successfully.  
• 2. Automatic reminders: Our system automatically reminds you of upcoming deadlines, giving you the time and insights needed to support your renewal decisions.  
• 3. Streamlined processes: Once instructions are received, we prepare the relevant documentation (including notarization and legalization where needed) and pay the fees on your behalf. We also manage all other maintenance tasks such as declarations of use, affidavits, and payment of taxes.  
• 4. Global consistency: We file trademark and design renewals directly in 16 jurisdictions and work closely with our trusted international partners to manage renewals in all other jurisdictions. We monitor all deadlines, regulatory changes, and official fees, and you only need to sign a single Power of Attorney to benefit from a global service.
• 5. Transparent pricing: We negotiate pricing with our foreign agent network to enable clients to benefit from economies of scale. All trademark renewal fees are provided upfront to ensure transparency and ease of budgeting. As importantly, we check and process all invoices, so you only receive a single bill in a single currency from a single supplier (monthly or quarterly as you prefer).
• 6. Complete oversight and control: You can track your renewals in real time via our secure online renewals system, which is provided to clients free of charge. We upload all documents directly into the platform to deliver a paperless renewal service. You can access this platform 24/7 to track progress, run reports, and download filing and renewal certificates. The system can also be connected directly to most IP management systems via our API.
• 7. A single point of contact: While we use technology to automate as much of the renewal process as possible, you will also have access to a dedicated project leader to assist you with queries, reporting, and any other needs.

→ Is your current trademark renewal provider delivering the service you need? Download our nine questions to ask when reviewing or selecting a provider.  

Questel has been handling worldwide trademark and design renewals for law firms and corporate IP departments for more than 30 years. We help our clients keep track of trademark renewal fees, deadlines, and associated formalities and ensure renewals are processed efficiently, on time, and to budget. Contact us to find out more.