Replacement Procedure Under the Madrid Protocol in the Post-Brexit Era, Rule 21 of the Regulations Amended

May 5 2021 - 14:33

Although the replacement mechanism (replacing a national/regional trademark with an international registration) has existed for a long time, it has not been widely used by right holders. To clarify the replacement details and to remove any doubts about the procedure, Rule 21 of the Regulations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks has been recently amended and entered into force on February 1, 2021.

What are the rules for replacing a national or regional registration under the Madrid Protocol?

According to Article 4bis of the Madrid Protocol, when a mark is the subject of a national/regional (for example EU) trademark registration, and simultaneously the subject of an international registration (IR), the IR is deemed to replace the national/regional registration provided that conditions listed in the Protocol and in Rule 21 of the Regulations under the Protocol are met.

For the replacement to occur, the following criteria must be met:

  • The protection of the IR must extend to the Contracting Party in question;
  • The national/regional registration and the IR that is replacing it must be for the same mark and in the name of the same person;
  • The IR must cover all the goods and services protected by the national/regional registration; and
  • The designation of the given Contracting Party must take effect after the date of the said national/regional registration.

The replacement is effective without any further action on the right holder’s side. However, the right holder may request the national IPO to note in its Register that a national/regional registration has been replaced by an IR. After this, the national IPO will notify WIPO’s International Bureau, which will record the information on the national registration in the International Register.

How has Rule 21 been amended?

The amendments to Rule 21 of the Regulations specify the principles governing replacement, acknowledging that both the national/regional registration and the IR that has replaced it may coexist. The right holder may choose to allow the national registration to lapse, while the priority date and protection of the lapsed national registration will still be conserved by the IR.

How to benefit from this procedure in terms of UK trademarks?

As of January 1, 2021, the EU trademark law no longer applies in the UK. As a result, all registered EUTMs were automatically converted into equivalent national UK trademarks, and the same procedure was applied in cases where the EU was designated in an IR.

As a result, right holders are now obliged to manage these converted trademarks directly with the UK IPO. This might be more burdensome than to just manage one IR portfolio because renewals, maintenance and recordal of eventual changes of ownership must be handled separately, there are more deadlines to comply with, and hiring local trademark attorneys might also be necessary.

A solution to this problem can be to designate the UK in an IR, in which case the national UK registration will be automatically replaced by the IR, and then request the UK IPO to take note of the IR in its Register. The UK IPO will then notify WIPO’s International Bureau, which will publish the details of the national registration in the WIPO Gazette of International Marks.

The cost of this procedure includes the fee for the subsequent designation of the UK in an IR, which has to be compared with the UK IPO’s renewal fees in case the UK registration is to be maintained and replacement not applied. In addition to potential costs savings, the convenience of handling a UK trademark as part of an IR and not as a separate national registration might make the replacement mechanism more popular in the context of the impact of Brexit. Trademark owners therefore might find it useful to explore the possibility of including the UK in new IRs or subsequent designations.

By: Tímea Torzsás

For more information, please contact Tímea Torzsás at our Hungary office.

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