Renewal of the International Registration
With respect to Contracting Parties designated under the 1999 Act, the international registration is valid for an initial period of five years and may be renewed for two additional five-year periods. Subject to renewal, the duration of protection available in each Contracting Party designated under the 1999 Act is at least 15 years, counted from the date of international registration (refer to "Individual designation fee and renewal for the United States of America"). Moreover, if the national legislation of a Contracting Party provides for a duration of protection in excess of 15 years for designs filed for registration by the national route, the international registration may be renewed with respect to that Contracting Party for additional periods of five years up to the expiry of the total duration of protection provided for in its national legislation.
99 Article 17; 99 Article 17(3)(b)
With respect to Contracting Parties designated under the 1960 Act, the international registration is valid for an initial period of five years and may be renewed for an additional period of five years. Subject to renewal, the duration of protection available in each Contracting Party designated under the 1960 Act is at least 10 years counted from the date of international registration. Moreover, if the national legislation of a Contracting Party provides for a duration of protection in excess of 10 years for designs filed for registration by the national route, the international registration may be renewed with respect to that Contracting Party for additional periods of five years up to the expiry of the total duration of protection provided for in its national legislation.
60 Article 11(1)(a) items 1 and 2; 60 Article 11(2)
Contracting Parties are required to notify to the Director General of WIPO the maximum duration of protection provided for by their domestic law. This information is supplied to holders in the unofficial notices of expiry which are sent by the International Bureau six months before the expiration of each five-year term (refer to “Procedure for renewal”). Where the holder wishes to renew the international registration in respect of a designated Contracting Party notwithstanding the fact that the maximum period of protection in that Contracting Party has expired, payment of the required fees for that Contracting Party must be accompanied by a statement that the renewal of the international registration is to be recorded in the International Register in respect of that Contracting Party. Allowing a renewal with respect to a designated Contracting Party notwithstanding the fact that the maximum period of protection in that Contracting Party, as notified to the Director General of WIPO, has expired is aimed at preserving the rights of the holder in the event, for example, of a change in the maximum duration of protection under the law of a Contracting Party which has not yet been notified to the Director General of WIPO.
99 Article 17(3)(c); Rules 36(2), 23 and 24(2)(b)
Renewal following refusal or invalidation
If a refusal is recorded in the International Register with respect to a particular Contracting Party for all the designs covered by the international registration, the holder may nevertheless request the renewal of the international registration with respect to that Contracting Party. The payment of the renewal fees must however be accompanied by a statement that the renewal is to be recorded in respect of that Contracting Party. The reason for allowing a renewal with respect to a Contracting Party that has pronounced a refusal is that, at the time of renewal, there may still be pending a judicial or administrative procedure in respect of such refusal. The rights of the holder may need to be preserved where the refusal was the subject of an appeal and no final decision had been taken by the date on which the renewal was due. A designated Contracting Party which has pronounced a refusal is, of course, free to determine the effects in its territory of such a renewal.
The situation is different with respect to an invalidation, since the recording of an invalidation in the International Register means, by definition, that the invalidation is no longer subject to appeal. The international registration may not, therefore, be renewed with respect to a Contracting Party for which an invalidation has been recorded for all the designs. Nor may it be renewed with respect to a Contracting Party in respect of which a renunciation has been recorded. Furthermore, the international registration may not be renewed in respect of any Contracting Party for those designs in respect of which an invalidation in that Contracting Party has been recorded. Nor may it be renewed for those designs in respect of which a limitation has been recorded in that Contracting Party.
Procedure for renewal
Six months before the expiry of each five-year term, the International Bureau sends to the holder and the representative, if any, a notice indicating the date of expiry of the international registration, along with the maximum term of protection which has been notified to the Director General of WIPO by the Contracting Parties concerned (refer to “Declarations by Contracting Parties”). If however the holder (or representative) does not receive such unofficial notice, this does not constitute an excuse for failure to comply with any time limit for payment of the renewal fees due.
The international registration may be renewed for some only of the designated Contracting Parties and for some only of the designs that are the subject of the international registration.
99 Article 17(4); Rule 24(2)(a)
An electronic renewal interface is available in eHague for total or partial renewal of international registrations.
In addition, eHague (Renewal) automatically calculates the renewal fees to be paid based on the data entered by the holder of a given international registration and allows the holder to view the reproductions of the designs contained in the international registration. eHague (Renewal) allows the payment of the renewal fees through an online payment system offering a range of payment methods according to the user account profile.
No official form is prescribed for the renewal of an international registration. Renewal may be effected by using unofficial form DM/4 which provides for the necessary information, namely:
- the international registration number concerned;
- the name of the holder (which must be the same as the name recorded in the International Register);
- the email address of the holder;
- either that the international registration is to be renewed for all the designs and for all the designated Contracting Parties – including, where applicable, those Contracting Parties in respect of which a total refusal has been recorded in the International Register and those Contracting Parties designated under the 1999 Act or the 1960 Act in respect of which the maximum period of protection has expired – or that the international registration is to be partially renewed (i.e. for only some of the designs and/or only some of the designated Contracting Parties);
- the signature of the holder or his/her representative; and
- the fees being paid and the method of payment, or instructions to debit the required fees from a current account at WIPO.
In case of partial renewal (i.e. for only some of the designs and/or only some of the designated Contracting Parties), the holder may specify the scope of the renewal by either indicating in item 4(a) the designs and the designated Contracting Parties for which renewal is requested, or by selecting in item 4(b) different sets of designated Contracting Parties for which different sets of designs are to be renewed (e.g. renewal of design 1 in Contracting Party A, and renewal of design 2 in Contracting Party B).
Renewal may also be effected by any communication giving the required indications (the international registration number concerned and purpose of the payment).
Fees for renewal
The fees due for the renewal of an international registration must be paid directly to the International Bureau by the holder. Those fees consist of:
- a basic fee;
- an individual designation fee for each Contracting Party designated under the 1999 Act which has required such fee1; and
- a standard designation fee in respect of each other Contracting Party for which the international registration is to be renewed.
The payment of individual designation fees in the context of renewal may only apply to Contracting Parties designated under the 1999 Act (provided that they have requested such fees) and cannot concern those Contracting Parties designated under the 1960 Act. In fact, the 1960 Act envisages solely the payment of “individual designation fees” in the context of a designation in the international application and not at the stage of renewal.
99 Article 17(2); Rule 24(1)(iii)
Individual designation fee and renewal for the United States of America
The individual designation fee, which must be paid in connection with an international application in which the United States of America is designated, is payable in two parts, in accordance with Rule 12(3). The second part of the individual designation fee covers a single 15-year duration counted from the date of grant of protection.
Therefore, subject to the payment of the second part of the individual designation fee, no renewal is required in order to maintain the effects of the international registration with respect to the designation of the United States of America. This does not, however, preclude the holder to renew the international registration with respect to the designation of the United States of America, in order to benefit from the possibility of centralized subsequent management of the international registration for this designation, such as the recording of a change in ownership in the International Register. In this case, only the payment of the basic fee is required in order to effect the renewal of the international registration in respect of the United States of America. In other words, no renewal designation fee is payable for the designation of the United States of America.
The fee calculator may be used to calculate the fees payable for the renewal of an international registration. eHague (Renewal) interface automatically calculates the renewal fees to be paid taking into account the scope of the renewal.
The fees should be paid to the International Bureau by, at the latest, the date of expiry of the registration. However, payment may still be made within six months from the date on which the renewal of the international registration is due, provided that the surcharge specified in the Schedule of Fees is paid at the same time.
If any payment made for the purposes of renewal is received by the International Bureau earlier than three months before the date on which the renewal of the international registration is due, it is considered as having been received three months before that date.
If the amount of a renewal fee changes between the date on which the fee was paid to the International Bureau and the date on which renewal is due,
- where payment is made not more than three months before the date on which renewal is due, it is the fee that was valid on the date of payment that is applicable;
- where the fee is paid more than three months before the date on which renewal is due, the payment is considered to have been received three months before the due date, and it is the fee that was valid three months before the due date that is applicable; and
- where the renewal fee is paid after the due date, it is the fee that was valid on the due date that is applicable.
Insufficient fees paid
If the amount received is less than the amount required for renewal, the International Bureau promptly notifies at the same time both the holder and the representative, if any, accordingly. The notification specifies the missing amount.
If the amount received, after the expiry of the period of six months following the date on which renewal was due, is less than the amount required (including the surcharge for late payment), the renewal is not recorded. The International Bureau refunds the amount received and notifies accordingly the holder and the representative, if any.
Where the amount paid is insufficient, the holder may, instead of paying the missing amount, ask for some of the designated Contracting Parties and/or designs to be omitted, thereby reducing the amount due. This request must however be made within the time within which the missing payment would have had to be made.
Recording of the renewal; certificate and publication
The International Bureau records the renewal in the International Register, with the date on which it was due, even if the fees required were paid within the grace period of six months after the due date. The relevant data concerning the renewal is published in the I.D.B.
Rule 25(1); 99 Article 17(5); Rule 26(1)(vi)
Where the international registration has been renewed, the International Bureau sends a certificate of renewal to the holder.
Crediting of fees
Any standard designation fee or individual designation fee collected by the International Bureau is credited to the account maintained with the International Bureau by the Contracting Party concerned. This is done within the month following the month during which was recorded the renewal in connection with which the fee was paid.
Non-renewal
If an international registration is not renewed (because the holder did not pay the renewal fees or because the fees paid were not sufficient), it lapses with effect from the date of expiry of the previous period of protection.
Where the international registration has not been renewed, that fact is published in the Bulletin. Such publication is not made until there is no longer any possibility that the international registration might be renewed, that is, after the expiry of the period of six months following the due date (within which period renewal was possible upon payment of a surcharge).
Where the required renewal fees have not been paid by the due date, no recordings concerning the international registration concerned may be recorded in the International Register during the period of six months after the due date within which renewal remains possible upon payment of a surcharge. It is only after renewal has been recorded in the International Register that changes may be recorded in the International Register.
- Designation and renewal fees for international applications and registrations, in which the Republic of Korea is designated, are determined by class of the Locarno Classification. For a renewal, the following designation fees apply, depending on the international registration date:
- before December 1, 2020: for designs belonging to classes 2, 5 or 19 of the Locarno Classification, level 3 of the standard designation fee applies. For designs belonging to any other class, the individual designation fee applies.
- after December 1, 2020: for designs belonging to classes 1, 2, 3, 5, 9, 11 or 19 of the Locarno Classification, level 3 of the standard designation fee applies. For designs belonging to any other class, the individual designation fee applies.↑