How to Transform an International Registration into a National Trademark

Protecting your brand is essential for business success. As businesses expand internationally, it becomes crucial to secure trademark rights in multiple countries to prevent infringement and maintain exclusivity. One way to streamline this process is by obtaining an International Registration (IR) through WIPO and the Madrid System.

In certain circumstances, it can become necessary to later transform the International Registration (IR) into national trademark registrations in each of the registered jurisdictions. For example, if the trade mark in your home jurisdiction that is the basis for the International Registration fails in the first five (5) years due to rejection, opposition or non-use removal, you must transform the IR in all relevant Madrid Protocol jurisdictions in order to maintain the national registrations. That is because, in the first five (5) years, the International Registration cannot exist independently of the basic application/ registration (the trade mark in your home jurisdiction).

International Registration (IR)

An International Registration (IR) is a cost-effective and efficient way for trademark owners to obtain protection in multiple countries. It is governed by the Madrid System, which is an international treaty administered by the World Intellectual Property Organization (WIPO). The global reach of the Madrid Protocol continually expands. Currently, there are 108 members covering 124 countries. The Madrid System simplifies the process of obtaining trademark protection across multiple jurisdictions by allowing trademark owners to file a single application and designate one or more member countries for protection.

However, if the basic application or basic registration fails within the first five years, the Madrid Protocol allows the owner to transform the extension of protection into a new national trademark application/ registration in each designated country. Each new national application keeps the priority date of the original international registration.

Without a transformation, the International Registration will be cancelled in its entirety if the if the basic application or basic registration fails within the first five years. The time limit to apply for transformation in all relevant designations is three (3) months of the date the the basic application or basic registration is rejected or cancelled.

The Process of Transforming an International Registration into a National Trademark Registration

1. Review National Requirements: Before converting an IR into a national trademark registration, it is essential to understand the specific requirements of the national trademark laws of the designation country.
2. Engage Local Intellectual Property Counsel: Seek the assistance of local intellectual property (IP) counsel with expertise in the target country's trademark laws. They can guide you through the transformation process, ensure compliance with local regulations, and help you navigate any potential challenges.
3. File Applications for Transformation: With the guidance of your IP counsel, file national applications for transformation in the countries (designations) where you wish to transform your International Registration into a national trademark. Provide all necessary documentation, including translations, if required, and pay any applicable fees. Your IP counsel will handle the application process, ensuring accuracy and compliance.
4. Monitor Application Progress: Stay updated on the progress of your applications for transformation. Your IP counsel will communicate with the local trademark offices, respond to any inquiries, and address any issues that may arise during the transformation process.
5. Attend Trademark Renewals: Remember that national trademark registrations have their own renewal requirements and timelines. It is crucial to track these deadlines and ensure timely renewals to maintain your trademark protection in each country.

(Note: This article provides general information and should not be considered legal advice. For specific guidance regarding trademark registrations, consult with an intellectual property professional)