Replacement

Question 1

What is replacement?

Answer 1

Replacement relates to the Madrid System

If you have an older national or regional registration in a country and you then designate the same country in an international registration, the international designation will replace the national registration

Question 2

What are the requirements for replacement?

Answer 2

Triple identity

1. Same mark
2. Same owner
3. Same goods/services

Question 3

When can replacement occur?

Answer 3

Replacement (unlike seniority) happens automatically

But can also ask the IPO to take note in the Register of the replacing international registration

Question 4

What is the purpose of replacement?

Answer 4

1. Originally reason was to avoid duplication of protection (however, a designated country will typically accept duplication or will raise a provisional refusal - and then you can voluntarily cancel the national registration)
2. In the event formal replacement has taken place, and the national register reflects replacement, you could feel safer allowing the national registration to lapse - saving on renewal fees

Question 5

What is a risk of replacement?

Answer 5

Replacement does not allows designation within an IR to be backdated to the same date as National registration

Question 6

How can you request replacement? (Formally)

Answer 6

Replacement needs to be requested at each relevant national or regional trademark office - time consuming, possibly expensive as have to use local agents

For the UK - I.e replacing an old UK registration with an international registration designating the UK - file a Form TM28