Replacing a national trademark by an international registration

With the view of optimizing new trademark strategies we have experienced a barely used procedure of substitution of an earlier national trademark with an international registration.

With the view of optimizing new trademark strategies we have experienced a barely used procedure of substitution of an earlier national trademark with an international registration. This procedure is ruled by Article 4 bis of the Madrid Agreement and 4 bis of the Madrid Protocol. These provisions stipulate that when an international trademark is filed in a country where an identical national trademark already exists, it is possible to substitute this national trademark by the concerned international registration without prejudice to earlier rights acquired by reason of the national trademark. Strict conditions apply to perform this substitution: the marks must be identical, the products and services must be identical and the same owner must hold the two marks.

This mechanism is highly similar to the seniority process existing for Community trademarks. An opportunity is therefore given internationally to trademark owners to make substantial savings and simplify the management of their trademark portfolio. Once the substitution has been operated at trademark registries, national trademarks do not need to be renewed any longer and their effects are still enjoyed through the international mark.

Moreover, trademark management is centralized at the World Intellectual Property Organization instead of having various National Trademark Offices to
deal with. Many countries handle the process without any difficulties. However, this procedure being still unknown for some of them, the national practice may vary from one country to another. For instance, in most countries there is no specific procedure to have the substitution performed. In France, the replacement can simply be asked by a non formal letter whereas in other countries, such as Singapore, a formal document must be filed. Therefore, at this time, the substitution process remains globally a huge, easy and cheap opportunity for trademark owners to consider.

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