FOR IP PROFESSIONALS

Protecting your international trade mark

Some designated countries may insist on the nomination of an address for service in their country if they issue a provisional refusal (an objection) against an international registration. The offices of designated countries will advise you of their requirements where this occurs.

Please note that any change to the basic trade mark, that resulted from an action starting after the five-year period, has no impact on the international registration.

Designated countries

These are the countries that you nominate on the international application form as countries in which you are seeking international trade mark protection.

Requesting changes to an international registration

It is not possible to request changes to an international application until it has been recorded on the International Register and given an international registration number.

You may then apply in writing directly to the Iinternational Bureau (IB) or through us to record:

an amendment to the holder/representative's name and/or address
appointment of a representative
a restriction to the goods and/or services
a change in ownership of the international registration
subsequent designations

If a change is needed to details of an international application you should contact us. We may not be able to request the change until after an international registration number has been allocated.

Subsequent designations

It is possible to add countries to an international registration at any time. You may want to do this when your markets expand or when other countries join the Madrid Protocol.*

Requests for subsequent designations may be made with us or direct to the IB. A separate form and fees are needed for these requests.

*( Please note that the Phillipines can only be added to an international registration that has been lodged on or after 25 July 2012 - the date of that country's accession to the Madrid Protocol).

Renewal

Under the Madrid Protocol, renewal of international registrations is due 10 years from the registration date as recorded by the IB. The IB notifies the holder or their representative six months before the expiry date. Payment of renewal fees may be made up to six months after the expiry date, however penalty fees apply.

Changing the ownership of an international registration

A holder of an international registration can request that all or part of that international registration is transferred to another party.

The IB can only record the change of ownership of an international registration in whole or in part where the transferee is a person or entity entitled to file an International Application. This means that the new holder must have one of the following: