Outbound Madrid Protocol post registration

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After receiving your international registration, you must do the following to maintain your trademark protection through the Madrid Protocol: 

  • Maintain your basic registration or application for at least the first five years after the international registration date. 
  • Renew your international registration for your registered extensions of protection.
  • Maintain your registered extensions of protection in individual Madrid members that require post-registration maintenance filings in addition to renewal filings.  

You can use a subsequent designation form to request extension of protection of your trademark in additional Madrid members.  

Maintain your basic registration during the dependency period  

For the first five years after it issues, your international registration is tied to your basic trademark registration or application. During this dependency period, it's critical that you follow the requirements for keeping your basic trademark alive. Pay close attention to deadlines for renewals and proof of use.

Changes to your basic application or registration

During the dependency period, any changes to the protection status in your basic application or registration, including changes to the listing of goods or services, will also apply to your international registration and all related extensions of protection in individual countries. For example:  

  • If your basic application's or basic registration’s goods or services are restricted during the dependency period, the goods or services will be restricted in the international registration and in every registered or pending extension of protection. 
  • If your basic application abandons or basic registration is canceled or expires during the dependency period, your international registration and all pending and registered extensions of protection will be canceled.  

If the scope of your basic registration or application changes during the dependency period, we notify the International Bureau by issuing a ceasing of effect notice. The International Bureau then updates your international registration. 

We issue the ceasing of effect notice if:

  • Changes are made to the goods or services in your basic application or registration. 
  • Your basic application is abandoned or terminated. 
  • Your basic registration is canceled or expired. 

End of dependency period

Five years after the issue date of the international registration, your international registration will be independent from your basic registration. This means all pending and registered extensions of protection to individual Madrid members now depend solely on your international registration.  

Maintain your international registration

You must renew your international registration with the International Bureau every 10 years from the date it issued. You can use eMadrid to renew. If you don't renew your international registration, it will be canceled and all pending and registered extensions of protection based on the international registration will be canceled. 

You must also renew each pending and registered extensions of protection at the same time—they expire and are due for renewal when your international registration is due for renewal, regardless of when they were filed. This is separate from any maintenance requirements that individual Madrid members may have. If you don't comply with these renewal requirements, your extensions of protection will be canceled.  

Keep your international registration up to date

Use eMadrid to update your international registration directly with the International Bureau for any of these changes:  

  • Changes in ownership
  • Changes in owner name, entity, citizenship, street address, or email address 
  • Changes in representation 
  • Limitations to goods or services in any extension of protection
  • Renunciation (abandoning) of an extension of protection 
  • Partial or whole cancellation of your international registration 

Maintain extensions of protection in individual countries 

While renewals for your extensions of protection are filed with the International Bureau, some Madrid members have additional requirements and deadlines for maintaining registered extensions of protection according to their trademark laws. We recommend that you study the rules for maintaining registrations in each country using WIPO’s Madrid member profiles tool.  

Many Madrid members require that an attorney licensed to practice law within their jurisdictions handle maintenance filings for foreign-domiciled registrants. We can't assist you in maintaining these registrations or interact with foreign trademark offices on your behalf.   

Transforming your extension of protection into a national registration 

After a ceasing of effect, if goods and services are deleted from your international registration, or if your international registration is canceled, you have the option to transform part or all of a pending or registered extension of protection into a national trademark application.

You may only transform the goods or services in an extension of protection that were deleted due to a ceasing of effect. If the entire extension of protection was canceled due to a ceasing of effect, you may transform all goods or services into a new national application.

The request to transform an extension of protection must be filed with the particular Madrid member trademark office within three months from the date the ceasing of effect was recorded by the International Bureau. The resulting national trademark application will have the same effective filing date as your extension of protection. The new application may be subject to re-examination under the national law of the particular Madrid member. Because the new national trademark application is not part of the Madrid Protocol system, you must follow all requirements in the national law in order to register and maintain the national trademark.

Use the Madrid member profiles tool to find rules for transformation. 

Designating new countries for registered protection 

Once your international registration has issued, if you want to extend protection of your trademark to additional Madrid members, you must file a subsequent designation form.  

You can also use a subsequent designation to request extension of protection for goods or services listed in your international registration that are not protected in a previous designation to the Madrid member.  

  • You can file subsequent designations with the International Bureau or through the USPTO. You may designate as many Madrid members as you want in a single subsequent designation form, but you must pay a fee for each member that you designate.  

File a subsequent designation with the International Bureau

Filing directly with the International Bureau is cheaper and faster (you avoid the USPTO transmittal fee), and you can pay with a credit card or a WIPO Current Account. All fees paid directly to WIPO must be paid in Swiss francs. We recommend using the web-based eMadrid system for ease and convenience.

File a subsequent designation through the USPTO

To file a subsequent designation through the USPTO, complete the Subsequent Designation form in the Trademark Electronic Application System International (TEASi). Select the countries you want to extend protection to, and then calculate and pay your fees. When you file through the USPTO, you will be charged a USPTO transmittal fee in addition to the international fee.

We don’t review your submission for any requirements or accuracy. We simply forward it to the International Bureau.  

Date of your subsequent designation 

If you file your subsequent designation through the USPTO, the filing date will be the date you submit it to the USPTO if the International Bureau receives it within two months. Otherwise, the filing date will be the date the International Bureau receives the subsequent designation.

If you file your subsequent designation directly with the International Bureau, the filing date will be the date the International Bureau receives it.

The subsequent designation form also gives you the option to have the subsequent designation take effect after another filing takes effect. For example, you may request that the subsequent designation takes effect after a renewal, after a partial cancellation for some of the goods or services in the international registration, or after the recording of a change to the holder’s name or address. 

Review and examination of your subsequent designation 

When the International Bureau receives your subsequent designation, they review it to make sure it contains all required information and then forward the requests for extension of protection to the Madrid members you designated.

Like your initial designations, the Madrid members you designate in subsequent designations will examine the requests for extension of protection according to their national law. We strongly recommend that you review the trademark laws of Madrid members to prepare for any requirements that might arise when your requests for extension of protection are examined. 

Many Madrid members require foreign-domiciled trademark applicants to hire a local attorney to handle their applications.