You’ve successfully registered your trademark overseas under the Madrid System – what’s next?

This article will explain a number of considerations you should keep in mind after registering your international trademark to ensure your global brand remains protected.

Amending your international trademark

You can update details of your international trademark registration after the World Intellectual Property Office (WIPO) records your trademark in the International Register and issues you with an ‘International registration number’.

Changes that can be made include:

• full and partial changes of ownership of the International Registration;
• changing ownership of only the international registration or the basic trademark;
• requesting a change in name and/or address of the international trademark holder;
• limiting goods and services to which the international registration applies; and
• full or partial cancellation of an international registration.

Requests for any of these changes must be made directly to WIPO using the correct form and fees are payable directly to the WIPO.

Extending protection to additional countries

If you decide to expand your business to additional countries overseas or new countries join the Madrid System, you might wish to add further countries to your existing international trademark registration. This can be done by filing a request for a subsequent designation with the WIPO using their E-subsequent designation.

The International Bureau will notify you if there are any irregularities in your application for subsequent designation. If there are no issues, it will update the records on the International Register.

The additional designated countries you seek protection in will then check the International Registration against their own national trademark requirements to determine whether protection can be extended. Even though the International Bureau will notify you if any provisional refusals are raised, you will need to reply directly to the designated country about any refusal.

After any objections are overcome, the designated country will advertise your international registration for potential oppositions. If no oppositions are filed within the applicable time limits, protection of your international trademark will be extended to the additional designated country and you will receive a Statement of Grant of Protection.

Dependency period – five years after registration

The registration of international trademarks under the Madrid System is dependent on the basic application or registration of your trademark in Australia.

The dependency period is a period of five years after you file your application for international registration. During this period, any changes to your domestic registration can cause your international trademark to cease effect, meaning that you can lose protection in multiple overseas countries at once. Consequently, ensuring that your basic trademark in Australia does not cease within the dependency period is crucial to protecting your brand and preventing competitors from exploiting your mark.

IP Australia will notify the International Bureau, the body responsible for administering the Madrid System, if your Australian trademark:

• lapses;
• is refused or withdrawn;
• is amended to a narrower range of goods and/or services than originally applied for;
• is removed because of failure to renew;
• is removed because of a non-use action; or
• is cancelled by court order.

The International Bureau will then cancel your International Registration to the same extent and notify the relevant designated countries in which your mark is protected about the cancellation. Your international application and its resulting registration cannot be revived even if your basic trademark is later revived.

However, even if this occurs, you might be able to maintain your trademark in the individual countries designated by requesting that your international registration be converted into a national application. This is known as a transformation request.

A transformation request must be filed directly to the designated office of the country where you seek to protect your trademark within three months of your trademark recorded on the international register ceasing to have effect. This is often a complex procedure as each country has its own requirements for transformation.

If your transformation request is successful, your national application for your trademark will have the filing date of your original international registration.  

Renewing your international trademark – ten years after registration

International registration of your trademark under the Madrid System is protected for ten years from the date of registration, after which your registration will be due for renewal.

The International Bureau will notify either you as the trademark holder or your representative six months before your trademark is due to expire. The date of renewal will be the same for all countries you have designated on your international registration, even where some countries have subsequently been designated after your original application for international registration as discussed above.

You can lodge your request to renew your international trademark with WIPO’s e-renewal system or by completing the WIPO MM11 form. The WIPO’s fee calculator can help to work out the costs of renewal, noting that fees can change depending on when you make your payment.

Summary

Managing your international trademark is crucial to ensuring that your trademark remains protected overseas. Navigating the above processes can be complex and time-consuming, especially where they involve considering foreign trademark law. An experienced IP professional can assist you to develop an effective trademark management strategy, ensuring that you stay on top of these considerations and help secure your brand’s global strategy.

If you would like to register an international trademark or require advice on managing an existing international trademark, please do not hesitate to contact us.‍

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