The principle of replacement

What is replacement? 

Replacement refers to the principle that the designation via an International Registration automatically substitutes a corresponding national or regional trademark registration if all conditions stipulated in Article 4bis of the Madrid Protocol are met. No typo – this happens automatically!

Conditions for replacement

Automatic replacement takes place, if:

• the marks are the same;
• the registered owner is the same;
• the International Registration designates the same territory as is covered by the existing national or registration;
• the designation of the respective territory via the International Registration must be dated later than the registration date of the corresponding national or regional registration;
• the national/regional registration is valid at the time of the designation of the International Registration;
• the list of goods/services is the same or overlaps.

What happens if a national or regional registration is automatically replaced?

This is easy to answer: nothing. Both registrations coexist and the designation of the International Registration in the same territory must not be refused based on the earlier national or regional registration. Both registrations can continue to exist and can be renewed.

How to take advantage of the principle of replacement

If the above conditions are met, the owner can consider streamlining their trademark portfolio and allowing the national or regional registration to lapse. Before doing so, it is highly recommended to file with the national or regional IP Office a "Request to Take Note" in its Trademark Register that the International Registration has replaced a certain national or regional registration. The national or regional IP Office will make a corresponding note in its Register, then inform the International Bureau of WIPO accordingly, after which a corresponding note will be recorded in the International Register. This serves as readily accessible evidence that the designation of the International Registration enjoys protection as of the earlier priority date of the national or regional registration.

Any downsides to replacement?

As always when streamlining a trademark portfolio by allowing valid registrations to lapse, careful analysis of the situation is recommended:

• Is the International Registration still in the five-year dependency period?
• What are the costs of renewing the existing national or regional registration compared to the costs of a subsequent designation of an International Registration?
• Does the specific contracting state even have a mechanism in place to "take note" of a replacement?
• Does the contracting state accept partial replacement?

We are happy to help you evaluate your trademark portfolio and answer these questions.

authors: Gudrun Irsa-Klingspiegl, Christian Schumacher