Are you the owner of a national or regional trademark registration in a country or region of a Madrid System Member that you have later designated in an international trademark registration?
If yes, did you know that your international trademark registration automatically replaces your national or regional registration in the designated countries or regions concerned! Thanks to the Madrid System’s replacement feature, you then have the option to let your national or regional registration lapse, whilst retaining its earlier date of protection!
Note: Your national or regional trademark registration remains in place unless you choose not to renew it.
Important! Wait until the end of the five-year dependency period – and be sure that your international trademark registration has been granted protection in the designated Madrid System Member concerned – before you let your national or regional trademark registration lapse!
Your international trademark registration is dependent on your “basic mark” for a period of five years from the date of international registration. If for any reason your basic mark ceases to have effect – for example if it is refused, withdrawn, cancelled or not renewed – within this five-year period, your international trademark registration will be cancelled.
Key benefits of replacement
- Replacement streamlines trademark portfolio management and reduces costs, by consolidating national and regional rights into one international trademark registration.
- You can renew your international trademark registration following just one procedure, but still benefit from the earlier dates of multiple national or regional trademark registrations.
Conditions of replacement
- Your national or regional trademark registration must be valid at the time of designation;
- The designation in the international trademark registration must be made at a date later than the registration date of the national trademark registration;
- The mark must be the same in both the national/regional and the international trademark registration;
- The registration must in the name of the same holder;
- The list of goods and services must overlap (identical or similar).
Tip! Make sure that your later application for an international trademark registration covers all the goods and services that you wish to protect in a Madrid System Member!
How do you request replacement?
In fact, you do not need to do anything to take advantage of replacement; it is automatic.
You may however wish to ask the national/regional IP office concerned to “take note of the replacement”. This will provide you with the assurance that the replacement meets all necessary requirements and has taken place.
By “taking note of the replacement”, the IP Office concerned acknowledges in its national trademark register that, although the date of the international trademark registration is more recent, you have protection in its territory from the date of the national/regional registration.
The Office will notify us that they have “taken note of the replacement”, so that we can also record the details in the International Register. The information is then publicly available.
Tip! Different IP Offices have different procedures for “taking note of replacement”. Fees may apply. Find out more in our Madrid System Member Profiles available under eMadrid. Simply select the IP Office(s) you are interested in and check the ‘Replacement’ box on the ‘Select details’ screen.
A working example of replacement
- You have a national trademark registration in Australia, dated January 1, 2010.
- On March 1, 2022, you file an application for an international trademark registration, designating Australia.
- If the intellectual property (IP) Office in Australia grants protection, then you will have trademark protection in Australia under the international trademark registration from March 1, 2022.
- If the international trademark registration matches the national/regional registration (i.e., the same mark, with overlapping goods and services, in the name of the same holder), then it will automatically replace the Australian national trademark registration, retaining its date (January 1, 2010).
Replacement and BREXIT
If you had previously designated the European Union in an international trademark registration, you will know that – because of BREXIT – the original EU designation no longer covers the United Kingdom.
If the UK IPO had granted protection before December 31, 2020, they would automatically have created a new, separate national UK trademark right for you, to ensure continued protection after BREXIT.
If you would like your international trademark registration to cover the UK once again, you can request a subsequent designation using “Expand Protection of Your Registration” under eMadrid. You can then ask the UK IPO to ‘take note’ of the replacement of the national registration. The UK IPO will then indicate – in its national register – that you had protection through a national trademark registration in the UK, with a reference to the original EU designation date from your international trademark registration.
Find out more
- Guide to the Madrid System (paragraphs 823 to 842)