International trade mark protection strategies can be complicated and expensive, particularly, as brand owners move to take advantage of “international” registration in preference to country based registrations. Fortunately, there is a way to reduce ongoing portfolio management costs whilst retaining priority of rights as you transition your portfolio. This involves the replacement of national registrations with International Registrations (IRs) registered under the Madrid Protocol international trade mark registration system.
Currently 91 countries have signed up to the Madrid Protocol including the USA, China, Japan, Europe and India. As the major trading powers join, the system has become more attractive to brand owners. IRs can designate multiple countries and can be centrally renewed and assigned through the World Intellectual Property Office. Additional countries can be added as you expand your market reach. Because different countries have adopted the Madrid Protocol at different times (eg. 2001 in Australia and 2012 in New Zealand), many trade mark owners have already secured earlier national registrations in the relevant countries as well as later designating these countries under IRs as they move to take advantage of the “international” registration system. Renewing both the national registrations and the IRs duplicates renewal and administration costs.
To solve this problem, the Madrid system allows for “replacement” of national registrations with IRs in certain circumstances.
“Replacement” is available where a trade mark owner owns an IR designating a particular country and also owns an earlier national registration in that country for the same goods/services, or goods/services which aren’t the same but which fall within the scope of the goods/services of the IR. Rather than renew both the IR and the national registration, the trade mark owner can “replace” the earlier national registration with the IR. This can be done at any time. The result is that the trade mark owner retains the priority date of the older registration (which is noted on the Trade Marks Register) but only needs to renew the IR. This significantly reduces renewal costs over time as well as the administrative burden of portfolio management, whilst retaining the priority date of the earlier national registration.
For some portfolios and particularly for marks intended for long-term use, it may be worth adding subsequent designations for relevant countries such as Australia and New Zealand to IRs where there is already a corresponding national registration, to take advantage of the benefits of replacement. Although this involves some additional upfront costs for adding the designation, these costs will be recouped in reduced renewal fees and administrative costs.
Given the low cost of adding designations to IRs at the time of filing, it’s also worth bearing in mind designating Australia and New Zealand for new IR filings even where you have existing national registrations for the same mark and same goods/services, with a view to replacing the national registrations with the new IR over time.