You can add further countries to your existing international registration by filing a subsequent designation.
You may want to do this when markets expand or when new countries join the Madrid Protocol.
Before applying for additional countries to be added you need to:
- have an international registration number assigned to your application by the World Intellectual Property Organization (WIPO)
- understand some countries, such as India and the Philippines have specific requirements to subsequently designate so read the information on WIPO's website before adding these countries
- know all designated countries on an international registration will have the same date of renewal - the date of the first instance of filing
- know the renewal date will not change for countries added later
- know WIPO's acceptance of certain words in your list of goods and services does not guarantee other countries will also accept them.
Filing a subsequent designation
A request for subsequent designation can be made directly to WIPO online using their E-subsequent designation.
Once on the webpage you will be prompted to:
- enter an international registration number
- elect the contracting party/parties to which protection of an international registration is to be extended
- indicate the goods and services it applies to
- pay online by credit card or through a WIPO account.
Once you have submitted the form you will get a confirmation on screen and by email.
If the United States of America is designated, WIPO's MM18 form is also required.
Cost of filing a subsequent designation
You can use the WIPO fee calculator to get an exact amount in Swiss francs.
International Bureau's role
The International Bureau will examine the subsequent designation and send a notice if there are any irregularities.
If there are no irregularities or they are overcome within the specified time, the International Bureau will update the records on the international register. The details are published in the WIPO Gazette of International Marks.
Role of the designated countries
The designated countries check the international registration against national legislation and notify the International Bureau of either extension of protection within that country or objections (provisional refusal).
The International Bureau will let you know if provisional refusals are raised but you need to reply directly to the country about their refusal. Usually they will refuse your application because there is a specific legal requirement under their trade mark law that you do not meet. An example might be that you need to provide a contact address within the country.
Once any objections are overcome, the designated country can advertise your international registration for opposition. If opposition is filed, the designated country must notify the International Bureau advising of full or partial protection or full refusal within that country.
If a country does not object to your application within the set time limits your mark will be protected in that country.