Official Trademark Renewal Fees: Mind the International Gap

• How Trademark Renewal Fees are Calculated 

The first notable difference across territories involves the methods for applying official trademark renewal fees. Some IP offices charge a base fee for renewals—that is, a single lump sum for renewing a trademark. This base charge increases incrementally if the owner wishes to renew more. For example, if the owner wishes to renew their mark in multiple classes, additional fees will apply.  

For example, the UK IP Office (UKIPO) and the European Union IP Office (EUIPO) charge—completely different—base fees for a basic renewal, both of which can be increased if you wish to renew your mark in additional classes. However, some territories avoid imposing a base charge and instead only charge per class. The US Patent and Trademark Office (USPTO) is an example of an IP office that only charges per class.   

• How Late Fees for Trademark Renewals are Applied 

The methods for imposing late fees on trademark renewals also vary significantly. If you file your trademark renewal past the renewal deadline, then you will be charged additional fees. While some territories impose a lump sum fee, others add a percentage to the bill for renewal.  

For instance, the USPTO charges a set late fee per class. That means that if you renew your trademark late in four classes, you will be charged the per-class base rate, plus the additional late fee x4. Without prior knowledge of this constantly increasing fee, you could face unexpectedly high fees when renewing your trademark. What’s more, you may end up having to pay for further legal assistance to help you navigate a delayed renewal application.  

Other territories impose an altogether different method for late fees, charging an additional percentage of the main official fees. The EUIPO, for example, adds 25% to the cost of your renewal if you file after the deadline. 

• Requirements for Evidence of Trademark Use 

It is also worth noting that you may need to provide proof of use to maintain your trademark registration, even before the renewal deadline. This is the case in the US, where a trademark owner must provide an affidavit confirming the use of the trademark, which must be filed six years after registration. This proof also needs to be provided for renewals. Following these procedures is necessary to prevent the early cancellation of your trademark, which could result in great cost to your business. 

• Trademark Renewal Deadlines  

Renewals are generally every 10 years from your initial registration date. However, depending on the territory, the trademark office might not inform you of your renewal deadlines, so it’s important to keep track of your marks in different territories. Failing to track renewal deadlines can result in exorbitant late fees or loss of trademark rights.  

Aside from the time needed to manage the procedural differences in international trademark renewal fees and processes, the biggest impact on brand owners is that some trademarks are far more expensive than others.  

For example, let us imagine we are renewing a trademark before the deadline, in four classes. In the UK, this process would cost substantially less than renewing an EU trademark (which costs approximately three times more) or a US registration (around 3.5 times more). Although it may seem reasonable that an EU renewal is more costly as it ensures that your mark is renewed in multiple EU member states, the same cannot be said for the US renewal fees. There appears to be no clear correlation between the cost of renewal fees, therefore, and the benefits or reach they provide.  

Keeping track of your trademarks, renewals, and budget across multiple territories over an extended period can be challenging for international trademark owners. At best, it might be confusing; at worst, it can leave brand owners facing a sky-high bill without knowing why or how it could have been avoided. For this reason, it’s advisable to consult with a trademark renewal specialist to determine an effective method to manage the cost and process of IP renewals.  

To find out more about the trademark renewal process and how you could streamline the renewal process to control cost, reduce risk, and gain better control over your IP portfolio, download our eBook on ‘How IP Management Technology is Transforming Trademark Renewals’ or contact our subject matter experts.