In today's global marketplace, protecting your brand is more crucial than ever. The Madrid Protocol offers a streamlined solution for international trademark registration, allowing businesses to safeguard their brands across multiple jurisdictions by filing one single application designating countries of interest with World Intellectual Property Organization (WIPO).
But what happens when your business grows, and you want to extend your trademark protection to new territories? Enter Subsequent Designation—a powerful feature of the Madrid Protocol that allows trademark owners to broaden their protection even after the initial registration. This flexibility is essential for businesses looking to tap into new markets and foster global growth.
THE PROCESS OF SUBSEQUENT DESIGNATION
To initiate a subsequent designation, trademark holders must submit a request to the WIPO along with the required fees. This process allows for the extension of coverage to additional goods and services or the re-designation of members where protection was not initially secured.
Subsequent designations can broaden trademark protection by adding new members to the existing registration, either for all goods and services or specific ones. If there are limitations due to partial refusals or invalidations, holders can designate any remaining goods and services.
When a member has multiple subsequent designations for different segments of goods and services, it is the member's responsibility to define the scope of protection. If a holder renounces a designated member with multiple designations, all will be renounced, so the renunciation must be officially recorded before making a subsequent designation request.
Cases when subsequent designation is not possible
While the Madrid Protocol offers significant flexibility, there are several instances where the subsequent designation is not possible. This means that members cannot be included in a subsequent designation if the date of the international registration precedes the entry into force of the Protocol in that specific member country. Certain members, such as Brazil, Estonia, India, and the Philippines, have made such declarations.
For instance, a trademark holder can only subsequently designate India if the registration date is July 8, 2013, or later, as this is when the Protocol took effect in India. Similarly, for Brazil, the international registration date must be October 2, 2019, or later, since that is when the Protocol became effective in Brazil.
Period of Protection
The protection period for a subsequent designation aligns with the expiration date of the original international registration. For example, if an international registration has been active for eight years, the fees for a subsequent designation will only cover the remaining two years. This means that all designations under the international registration share the same renewal date, regardless of when they were added.
Renewal of International Registration
An international registration, recorded by the International Bureau in the International Register, is valid for a period of 10 years from the date of the international registration. An international registration can be renewed every 10 years directly with the International Bureau, upon payment of the required renewal fees. There is no limit to the number of times that an international registration can be renewed.
Renewal Considerations for Subsequent Designation
Subsequent designations allow for the expansion of geographical protection by adding new territories. However, it is crucial to note that these designations are extensions of the existing registration and do not possess their own 10-year lifespan; they expire on the same date as the original registration. Therefore, if the registration is nearing its expiration, holders may opt to wait until after the renewal due date to make additional designations, thereby avoiding unnecessary renewal fees for a designation that will be valid for only a short time.
If an international registration has been renewed following an early renewal, and the holder requests the recording of a subsequent designation after the renewal has been recorded but before the initial due date, the subsequent designation will take effect immediately. However, if the holder specifies in the request that the designation should take effect after the due date, it will do so accordingly.
In cases where the subsequent designation takes immediate effect, the holder must also request a complementary renewal to pay the renewal fees for the new designation, ensuring that it remains valid even after the due date.
For better understanding, please see the example below:
- An international registration was registered on October 03, 2010, with the renewal date of October 03, 2020.
- On April 03, 2020, the International Bureau sent an unofficial reminder about the upcoming renewal.
- The holder paid the renewal fees on May 05, 2020, and the renewal was recorded, with a new expiry date set for October 03, 2030.
- On June 10, 2020, the holder requested a subsequent designation for Switzerland and also submitted a complementary renewal for Switzerland, as the subsequent designation was made after the renewal fee payment but before the current renewal validity period ended on October 03, 2020.
CONCLUSION
The Madrid Protocol is a vital tool for businesses looking to protect their trademarks internationally. One of its standout features is the ability to file subsequent designations, which allows trademark owners to expand their brand protection into new countries.
To make the most of this opportunity, it's important to file subsequent designations at the right time. Doing so well before the renewal due date—or right after a renewal has been officially recorded—can help avoid extra fees and ensure continuous protection for your brand.
This strategic timing helps avoid complications related to expiration dates and ensures that the protection remains effective without incurring unnecessary fees. By carefully managing the timing of their filings, businesses can maximize their trademark protection and support their global growth objectives.
For further information please contact at S.S Rana & Co. email: info@ssrana.in or call at (+91- 11 4012 3000). Our website can be accessed at www.ssrana.in
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.
