Madrid System: Frequently Asked Questions

As from January 1, 2021, a comparable national trademark will be recorded on the Register of the United Kingdom (UK) for every international registration protected in the EU before January 1, 2021.

Where protection results from multiple designations of the EU in one international registration (e.g. a designation made in the international application and a subsequent designation), one comparable national trademark will be recorded for each designation.

These newly recorded comparable UK trademarks will be independent from the international registration and governed by the UK law. Holders will have to manage them directly with the UK Office (UK IPO).

Holders of an international registration designating the EU that the EUIPO has neither refused nor protected on January 1, 2021, may apply for a national trademark registration with the UK IPO in the nine months after January 1, 2021 to preserve the date of the designation of the EU.

The same applies for holders whose international registration or subsequent designation of the EU, as the case may be, is recorded in the International Register after December 31, 2020, but with a date earlier than January 1, 2021. In this case, the said nine-month period will be counted from the date on which the international registration or subsequent designation of the EU is recorded in the International Register.

No, the early renewal of your international registration will have no effect on the comparable national trademark that was automatically recorded on the UK Register on January 1, 2021. Any international registrations designating the EU that expire after January 1, 2021 must be renewed directly with the UK IPO in accordance with the UK law and practice.

This is because the renewal of an international registration is only effective from its expiration date, regardless of the date of payment.

To find out how to renew your comparable trademark in the UK, please refer to the guidance issued by the UK IPO.

Yes, the renewal of the EU designation will have an effect in the UK providing (i) the EUIPO had granted protection to the mark in the international registration before January 1, 2021; (ii) the renewal fees for the international registration have been fully paid to WIPO before January 1, 2021; and (iii) WIPO has recorded the renewal in the International Register.

Please note holders must inform the UK IPO if their international registration has been renewed late (for example, within the six-month grace period) or where the renewal has not been recorded in the International Register (for example, because it was requested close to the expiry date and had not been processed by WIPO before January 1, 2021). In this situation, the comparable national mark will have a status of “expired”. Holders may inform the UK IPO of the renewal by email at: WIPOrenewaltrademarks@ipo.gov.uk. Once notified of the renewal, the UK IPO will change the status of the mark to reflect the renewal.

Yes, but you would need to subsequently designate the UK in the international registration that prompted the creation of a comparable UK trademark. Under Article 4bis of the Madrid Protocol, that international registration would replace the comparable UK trademark, allowing the holder to regain the advantages of centralized management for the protection of the UK. The holder may request the UK IPO to take note of this replacement in the UK Register.

The same would apply to a UK registration for which the holder has claimed the earlier date of a designation of the EU. The holder may subsequently designate the UK in the international registration concerned after the mark has been registered in the UK and Article 4bis of the Madrid Protocol would apply accordingly.

However, holders must be aware that, while a comparable UK right will be recorded, a subsequent designation of the UK would be subject to examination by the UK IPO and be published for opposition.

Yes, providing the requirements set out in Article 4bis(1) of the Madrid Protocol are met.

The following example illustrates how replacement works in your circumstances:

• You have an international registration dated February 1, 2019 designating the EU. It has been granted protection by the EUIPO.
• On January 1, 2021, the UK IPO automatically recorded a comparable trademark on the UK register. The UK rights are preserved from February 1, 2019 (i.e., the date of the international registration designating the EU - taking into account any priority date, if applicable).
• On February 1, 2021, you add the UK to your existing international registration by way of a subsequent designation. If this is in order, and later granted protection by the UK IPO you will have protection in the UK under the international registration from February 1, 2021.
• As a result, you would have “double protection” in the UK – protection under the comparable UK trademark and protection under the UK subsequent designation in your international registration.
• If the UK subsequent designation in the international registration is the same as the comparable trademark recorded earlier by the UK IPO, the comparable trademark will automatically be replaced by the UK subsequent designation of the international registration. “Automatically replaced” means that the UK subsequent designation in the international registration will benefit from the earlier date of rights in the UK (i.e. February 1, 2019). You may then request the UK IPO to take note of the replacement and, if you wish, allow the UK comparable trademark to lapse.

For more information on the principle of replacement, please refer to [link FAQ of Replacement]

Yes, you can make use of replacement provided that your subsequent designation of the UK takes effect after the earlier date of rights in the UK as preserved on January 1, 2021 (see Article 4bis(1)(iii) of the Madrid Protocol). Please see the following example below:

• You have an international registration dated February 1, 2019 designating the EU. It has been granted protection by the EUIPO.
• On February 1, 2020, you subsequently designated the UK. The UK IPO granted protection. You now have a UK right dated February 1, 2020 under the international registration.
• On January 1, 2021, the UK IPO automatically recorded a comparable trademark on the UK register based on your EU designation. The UK rights are preserved from February 1, 2019 (i.e., the date of the international registration designating the EU).
• As a result, you have “double protection” in the UK – protection under the comparable UK trademark and protection under the UK subsequent designation in your international registration.
• If the UK subsequent designation in the international registration is the same as the comparable trademark recorded by the UK IPO, the comparable UK trademark will automatically be replaced by the UK subsequent designation of the international registration. “Automatically replaced” means that the UK subsequent designation of the international registration will benefit from the earlier date of rights in the UK (i.e., February 1, 2019). You may then request the UK IPO to take note of the replacement and, if you wish, allow the UK comparable trademark to lapse.

As a UK national or legal entity, you are not entitled to file an international application through the EUIPO as Office of origin unless if you have a specific entitlement in the EU.

However, as the UK is a Contracting Party to the Madrid Protocol, you are entitled to file through the UK IPO as the Office of origin and, as the new holder, claim entitlement through the UK in a request for the recording of a change in ownership.