Are you aware that some of your national trademark registrations
might already have been replaced by designations of International
Registrations? You may be wondering how this could have happened
and whether you need to worry? Here is a brief explanation of the
principle of replacement.
What is replacement?
Replacement refers to the principle that the designation via an
International Registration automatically substitutes a
corresponding national or regional trademark registration if all
conditions stipulated in Article 4bis of the Madrid Protocol are
met. No typo – this happens automatically!
Conditions for replacement
Automatic replacement takes place, if:
- the marks are the same;
- the registered owner is the
same;
- the International Registration designates the same
territory as is covered by the existing national or
registration;
- the designation of the respective territory via the
International Registration must be
dated later than the registration date of
the corresponding national or regional registration;
- the national/regional registration is valid at
the time of the designation of the International
Registration;
- the list of goods/services is the same or overlaps.
What happens if a national or regional registration is
automatically replaced?
This is easy to answer: nothing. Both registrations coexist and the
designation of the International Registration in the same territory
must not be refused based on the earlier national or regional
registration. Both registrations can continue to exist and can be
renewed.
How to take advantage of the principle of
replacement
If the above conditions are met, the owner can consider
streamlining their trademark portfolio and allowing the national or
regional registration to lapse. Before doing so, it is highly
recommended to file with the national or regional IP Office a
"Request to Take Note" in its
Trademark Register that the International Registration has replaced
a certain national or regional registration. The national or
regional IP Office will make a corresponding note in its Register,
then inform the International Bureau of WIPO accordingly, after
which a corresponding note will be recorded in the International
Register. This serves as readily accessible evidence that the
designation of the International Registration enjoys protection as
of the earlier priority date of the national or regional
registration.
Any downsides to replacement?
As always when streamlining a trademark portfolio by allowing valid
registrations to lapse, careful analysis of the situation is
recommended:
- Is the International Registration still in the five-year
dependency period?
- What are the costs of renewing the existing national or
regional registration compared to the costs of a subsequent
designation of an International Registration?
- Does the specific contracting state even have a mechanism in
place to "take note" of a replacement?
- Does the contracting state accept partial replacement?
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
