World Intellectual Property Organization

Modifications to an international registration

What is a modification of an international registration?

A modification is a change of certain data and/or the scope of protection of the international registration. The main modifications are the following:

  • the addition of more Contracting Parties to the international registration;
  • the change in ownership of the international registration;
  • the change of the name and/or address of the holder;
  • the change of the name and/or address of the representative;
  • the limitation/cancellation of the goods and services listed in the international registration;
  • the renunciation of one or more designated Contracting Parties;
  • the restriction of the holder’s right of disposal;
  • the grant of a license;
  • the cancellation of the international registration.

 Will I receive a new certificate following a modification to my international registration?

No.  A notification of recordal of the modification in the International Register is sent, but no new certificate of international registration is issued.

Can I modify my trademark after its registration by the International Bureau?

No. Any change to the logo or wording of a trademark protected by an international registration requires a new application for international registration.

Can I modify the list of goods and services as mentioned in the international registration?

You cannot add more goods or services and/or new classes. However, you can limit or restrict the list of goods and services (form MM6) or you can partially or totally cancel the list of goods and services (form MM8). 

Can goods and services be moved from one class to another?

No.  Moreover, when a new edition of the Nice Classification is published, the International Bureau will not reclassify the list of goods and services of an international registration that is the subject, after the entry into force of that new edition, of a renewal, subsequent designation or any other change affecting the list of goods and services.

Can I modify the designated Contracting Parties as mentioned in the international registration?

You can add one or more Contracting Parties by filing a subsequent designation (form MM4).

You can renounce one or more designated Contracting Parties for all the goods and services (form MM7).

When can I file a subsequent designation?

Once the international application has been recorded and an international registration number attributed, a subsequent designation can be requested at any time. 

Is a new certificate of registration issued after recordal of a subsequent designation?

No. 

What is meant by “opting-back”?

If the designation of the European Union in an international registration has been withdrawn, refused or has ceased to have effect, conversion may be requested through a subsequent designation of its Member States.  This mechanism, offering the holder of an international registration the option of converting the designation of the European Union into either a national application filed directly with the Member State concerned or a subsequent designation of that Member State under the Madrid system, is often referred to as the “opting-back” provision.

You should complete form MM16 to request the recording of a subsequent designation resulting from conversion.

I have moved to a new address or my representative has moved to a new address. What should I/he do?

Complete form MM9 or MM10 to request the recording of a change of address.

I have changed the name of my company or my representative has changed its name. What should I/he do?

Complete form MM9 or MM10 to request the recording of a change of name.

Can I allow someone else to use my trademark?

Yes. You can license the right to use your mark to someone else, in all or some of the designated Contracting Parties and/or for all or some of the goods and services covered by the international registration. It is advisable to check the national or regional applicable law to comply with local licensing requirements, if any.

You should complete form MM13 to request the recording of a license.

Can I transfer my international registration to someone else?

Yes. In that case, you must use form MM5 to request the recording of a change in ownership. A change in ownership may be total or partial.

Which form is to be used to merge two international registrations?

There is no form. The request may be submitted directly to the International Bureau or through the Office of the Contracting Party of the holder.

NB: two or more international registrations may be merged only when they result from the splitting of a single international registration and the same party has since been recorded as the holder of all the concerned international registrations. It is not possible to merge two international registrations with different numbers.

Can I send forms to the International Bureau electronically?

At present, it is only possible to file for renewal of an international registration electronically (http://www.wipo.int/madrid/en/services). All other requests must be sent either by facsimile (+41.22.740.1429) or by e-mail (intreg.mail@wipo.int) or by post. Applications for international registration (forms MM1, MM2 and MM3) must be sent to the Office of origin, not directly to the International Bureau.

I have sent WIPO a form by facsimile. Do I need to send the original by post?

No. In fact, please don’t ! Forms or any correspondence can be sent either by facsimile (+41.22.740.1429) or by e-mail (intreg.mail@wipo.int) or by post. In order to facilitate internal mail processing, we assign an individual identification number to every facsimile, e-mail and postal letter we receive. Postal doubles and confirmation letters of facsimiles or e-mails already sent are therefore - unnecessarily - processed and assigned a different identification number, which can lead to confusion and delay when preparing the reply.

What is a restriction of the holder’s right of disposal (pledge)?

It is a restriction of the right of the holder to dispose of his international registration. Such a restriction may result, for instance, from a court order concerning the disposal of the assets of the holder, or from the fact that the international registration has been given as security or is the subject of a right in rem.

Can a legal representative of a bank sign the MM19 form (restriction of the holder’s right of disposal)?

No. The MM19 form must be signed by the recorded holder or representative or by the Office of the Contracting Party of the recorded holder. If the restriction concerns only one designated Contracting Party, the form can be signed by the Office of that Contracting Party. 

Is the recording of a restriction of the holder’s right of disposal published?

Yes.  It is published in the WIPO Gazette of International Marks and can be seen on ROMARIN database.

 

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