Maintaining International Trademarks: Renewal Deadlines and Requirements

Imagine waking up to discover your trademark has disappeared, and not because someone challenged it, but because you missed a renewal deadline by two weeks. This nightmare has happened to giants like Coca-Cola, Tiffany & Co., and Burberry, which sounds inconceivable until you realize the scale at which international trademarks are managed.

With trademarks across multiple countries with different renewal schedules and requirements, keeping track becomes exponentially complex. And once a trademark lapses, you might not get it back. So here’s how to protect yourself and keep international trademarks up-to-date.

Different Countries, Different Rules

While most countries follow a 10-year renewal cycle, that’s where the similarities end. Some count from your application date, others from the registration date. Some require proof of use, while others just need payment.

United States: Multiple Deadlines, High Stakes

The U.S. has one of the most demanding trademark maintenance schedules. You must file a Section 8 Declaration between years 5-6 after registration, proving actual use with specimens. Missing this means automatic cancellation after the six-month grace period (with a surcharge if you reapply).

At the 10-year mark, you must file a combined Section 8+9 (Declaration of Use plus Renewal), then repeat every cycle. The USPTO does send email reminders roughly six months before a required application, but the burden of actually going through the process is entirely on you.

For Madrid Protocol registrations designating the U.S., you must also file Section 71 declarations and maintain your WIPO international registration. If the international registration expires, your U.S. protection expires too.

European Union: Simple Renewal with a Twist

European trademarks last for 10 years from the application date. You can renew within six months before expiry; you can even be six months late, but a surcharge will be applied.

But while the EU doesn’t require proof of use when renewing, five consecutive years of non-use make your mark vulnerable to cancellation challenges. Keep detailed records of marketing materials, sales invoices, and product photos, just in case you need to reaffirm your trademark.

China: Easy Renewal but Strict Use Requirements

China’s trademarks can be renewed a full year before the 10-year duration of the trademark lapses, and you don’t need to prove your use of the trademark. However, just three years of non-use make you open to getting challenged for the trademark.

Japan: Split-Payment Flexibility

Japan offers a unique flexibility option to split the payment into two, with the same three years of non-use allowing the trademark to be challenged. If you choose split payments, the trademark can be immediately canceled, so make sure to keep that in the back of your head.

Canada: Modernized System

Registration periods in Canada have been reduced to 10 years, the same as the rest of the world. But this has also brought the same non-use clauses as Japan and China. You can file within six months before expiry or in a six-month grace period with late fees.

Madrid System: One Registration with Multiple Obligations

Your WIPO international registration renews every 10 years. However, designated countries like the U.S. still require local maintenance filings. This also means each country can tack on a cost for filling and renewing, which can become a mess if you have many international trademarks.

Critical Mistakes to Avoid When Maintaining International Trademarks

Make sure to keep your registration information on file with periodic reminders and proper cataloging. A simple administrator change can mean vital reminder emails go to spam folders, and acquired trademarks lapse due to failing to keep up with use.

With many countries allowing third parties to challenge your trademark after three to five years of apparent non-use, not keeping track of marketing materials, sales, and product use within a country or region can prolong case proceedings and add to costs and stress.

Additionally, renewing trademarks can get costly – and fast. Keep a proper record of all deadlines and a healthy financial budget for when you need to renew a trademark.

Finally, while trademark laws seldom change, duration changes are not unheard of. If you’re not well-versed in trademark law, consult a professional international trademark protection provider.

Building a Maintenance System

Start with comprehensive tracking of every trademark, registration number, date, country, class count, and deadline. As your company grows, manual tracking and filing might become impossible. In that case, professional trademark management software can automate deadline calculation across different countries’ rules and send advance reminders.

In most scenarios, you’re better off setting up a renewal review 18 months before a vital deadline for each applicable region, with additional ones at the 12- and 6-month mark (which is when most renewals can be processed). This gives you time to assess whether you need to renew, gather documentation, secure budgets, and handle complications, or decide if you want to let the trademark lapse due to non-use. For the latter, you should conduct annual portfolio audits reviewing whether each mark is still used, strategically valuable, and worth the renewal investment.

What Happens When You Miss a Deadline?

Most countries provide six-month grace periods with late fees (for example, the U.S. adds $100/class and the EU adds 25%). But you should still file as soon as possible to avoid administrative delays and complications where third parties might challenge the trademark.

Past the grace period, your options are limited. Some countries allow petitions for extraordinary circumstances, but simply stating “we forgot” doesn’t qualify. Usually, your trademark is permanently canceled and needs to be reapplied for. However, that new application means you lose priority, accumulated rights, and incontestable status. Anyone else can file for your trademark, and if they catch the first day of lapsing, they might get it.

As such, international trademark renewal can be critical to protecting brand equity across global markets. Working with professional international trademark services is a cost-effective option if you don’t have a legal team that is well-versed in this area, and allows you to rely on decades of knowledge and automated systems to keep track of all details for your case.