The Renewal of the Madrid Agreement

The Renewal of the Madrid Agreement

The Renewal of the Madrid Agreement
Through the United States trademark law system, a particular trademark may be perpetually endless, as long as it is renewed every ten years. A similar approach is available in the Madrid Agreement, where an international trademark registration must be renewed in order to continue its use and international recognition in terms of rights and protection. Renewal of the registration is required every ten years from the original date that the registration was issued. 
An advantage provided by the Madrid Agreement is that the owner of the mark does not need to file a renewal for every country that the mark is internationally registered for protection; a single renewal application may be filed with the World Intellectual Property Organization, or WIPO, which would consider the renewal to apply for all countries and nations the mark is recognized in, unless otherwise specified.
The international registration renewal is considered to be complete once the necessary fees are paid in full, which may include the basic fee, as well as supplementary and individual fees for the involved Contracting Parties. A Contracting Party must not be found to have any prior notice of refusal or invalidation in order to be considered for the license renewal, whether it be for the mark itself, or the goods or services related to that mark. A renewal application may be filed, and will still be upheld as long as the payment of fees is completed by the end of the sixth month that the application was filed, and any necessary surcharges are paid.
Certain specific situations may arise regarding the renewal of an international registration, simply because they are more complex than domestic registrations, and offer more options regarding terms of protection. In the case that the holder or owner of a mark may wish to renew the international registration of a trademark, but limiting it to only certain Contracting Parties, the application for renewal and fees must also be accompanied by a statement regarding the renewal to certain parties, but not others, and a formal request to not record those parties in the register as having a renewed registration. 
A similar situation may be applied to the renewal of only certain types of goods or services related to that specific trademark; the applications and fees must also be submitted along with a statement signaling which goods or services are to be considered for renewal, and which ones are to be excluded. Renewal of registration may be refused under the Madrid Agreement if the Contracting Parties have a prior invalidation recorded, whether it be for the goods or services, or because of an existing notice of provisional refusal. 
A renewal may also be discarded if the necessary fees are not paid in full. In such a case, if at the time the application is submitted the imposed fees are not paid, or not paid in full, the International Bureau will notify the owner or holder of the mark, as well as any contracting parties and representatives, if any. The renewal fees have a period of six months to be paid in full; if the payment is received after the expiration date, the renewal will not be recorded. The Madrid Agreement further gives flexibility for payment of fees by only requiring at least 70% of the total fees to be received in the six month allotment period; three more months are provided to complete payment of the imposed fees effective from the date of notification of the missing fees.
The Madrid Agreement provides those with international copyright registrations ample time to complete the fee payments, while also allowing for flexibility in order for those marks to be renewed. Furthermore, the Madrid Agreement offers the convenience for a one-time renewal process rather than having to provide for a separate renewal application process for each of the nations or countries the mark is to be recognized in. The renewal process under the Madrid Agreement allows for the owner of the mark to renew the international registration in one shot, killing multiple birds with one stone, so to speak.




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