Managing and renewing your international trade mark

Certain changes to your international trade mark can result in the ceasing of your trade mark rights. If your trade mark is amended or if the base application lapses within five years of the date of the International Registration, also known as the dependency period as per Article 6(3) of the Madrid Protocol, your trade mark rights may cease. IP Australia will monitor trade mark activity and notify the International Bureau of the changes. In turn, the International Bureau will inform you and the trade marks office of the designated countries of the trade mark cancellation.

Reasons for extinguishment of the base application:

• Lapsing
• Refusal or withdrawal
• Amendment to include a more narrow range of goods and/or services than what is included in the original application
• Removal due to non-renewal
• Cancellation owing to court action or court mandated cancellation

Amending your international trade mark

After a trade mark is registered internationally, as evidenced by an international registration number, several details of the trade mark can be amended with WIPO. These changes can include:

1. Full or partial change of ownership

Your registration can be transferred to a person or an entity who is entitled to own a trade mark registered under the Madrid Protocol, that is,

1. A resident or a national of the Madrid system member country; or
2. An individual or entity that possesses a commercial or industrial establishment in a member country.

Ownership of an international trade mark can be fully transferred by amendment of the international trade mark. Alternatively, the ownership of the trade mark in one or more countries or of some of the classes of goods and services can be changed. Under such circumstances, the portion that belongs to the new owners will be issued a new international registration number. When the renewal is due, both the original and new owners will be notified by the international bureau.

In addition, ownership of the international registration or the base trade mark can be changed. Within a five-year period after registration, the international trade mark registration is dependent on the base or national registration. Therefore, you should ensure that the new owner will properly maintain the trade mark to avoid any repercussions to the international registration.

2. Holder name and/or address
3. Limitation or cancellation of the classes of goods and services in some or all countries
4. Full cancellation of the international registration
5. Removal of one or more designations from an international registration

Adding countries to your international trade mark

It is common for holders of international registrations to wish to add subsequent designations after their original selection of countries, this can be due to market expansion or new countries joining the Madrid Protocol.

Before filing for subsequent designation to add countries to your international trade mark, you have to be aware of the following:

• You need an international registration number issued by WIPO.
• Certain countries have specific requirements for subsequent designation, so verify whether the countries you are considering to add have special requirements by consulting your attorney.
• All designated countries included in an international registration will have the same renewal date, that is, the date when the registration was first filed, regardless of how close to the renewal date that a country is subsequently designated.
• Different legislation will dictate the outcome of the subsequent designation. The previous acceptance of certain elements of the trade mark by WIPO does not guarantee the same results in the subsequently designated countries.

When are subsequent designations not applicable?

Certain countries require subsequent designations to the country to have an international registration date after their accession to the Madrid system.

Thus, subsequent designation to these countries of trade marks with international registration dates that predating the above mentioned is not possible. Instead, your trade mark attorney can file a domestic application in the country or start a new international registration designating these countries.

What happens after a subsequent designation application?

After a subsequent designation application is submitted, the International Bureau will examine the subsequent designation request and inform the applicants of any irregularities. Without irregularities or if these were addressed within the specified time frame, the international registration will be updated on the international register.

The designated countries will then check whether the international trade mark meets their legislative requirements for registration and inform the International Bureau whether protection can be extended to those countries or objections arise in their examination (provisional refusal). If objections exist and are overcome, the designated countries will advertise the international registration to start the opposition period and subsequently inform the Bureau of full or partial protection or refusal. Without any objections, international trade mark protection will be extended within that country.

Transformation

Transformation is the process by which an International Registration is converted to national or regional applications. Trade mark rights in individual designated countries can be retained by requesting for the international registration be converted to a national application by submitting a transformation request. When IP Australia has informed the International Bureau of the ceased effect, the transformation request should be submitted to the designated office within three months of the cancellation or extinguishment of the international registration. Your trade mark attorney can help you in contacting the designated offices to prepare and file the documentary requirements and determine the transformation costs, which vary per designated office. If the request is successfully filed within the three month-period, then the transformed national trade mark will retain the filing date of the original international registration.

Renew your international trade mark

Under the Madrid System, a newly registered international trade mark is valid for a period of 10 years. After this period, the trade mark can be renewed indefinitely every 10 years by paying the fees prescribed by the World Intellectual Property Organisation (WIPO, International Bureau).

The trade mark attorney on file will be informed by the International Bureau about the expiration of the trade mark six months before the expiry date. An international registration will have the same renewal date across all designated countries, even those that are subsequently designated.

Renewal fees

Renewal fees can be paid through WIPO's e-renewal system, and the fees vary depending on when payment is made. Your trade mark attorney can determine the renewal fees using WIPO's fee calculator. Take note that late renewal, which is payable only up to six months after the expiry date, will incur a surcharge.

The trade marks attorneys at Baxter IP are well versed in filing, managing and renewing international or Madrid protocol applications. Contact Baxter IP if you require any of the above services for your international trade mark registration.