Madrid Replacement: Keeping Your Earlier Rights

Replacement is one of the most useful features of the Madrid System and one of the least understood. In plain words: if you already own a national registration in a country, and you later designate that same country through an international registration, the international registration can take over from the national one and keep the earlier national date.

You do not lose the years you have already built. That matters for seniority in a dispute, for proving you were there first, and for tidying a portfolio that grew country by country.

This post covers what replacement is, when it applies, and the two related mechanisms people confuse it with: central attack and transformation. If you want the basics of how the Madrid System works, read the Madrid Protocol multi-jurisdiction guide first, and see Madrid vs direct filing for the route decision. This one assumes you already own national rights.

What replacement actually does

Replacement is set out in Article 4bis of the Madrid Protocol. Where the conditions are met, the international registration is deemed to replace the earlier national registration in that country, without prejudice to any rights acquired under the national one.

Two practical consequences:

• The international registration is treated as dating back to the national registration in that country. You keep the earlier date.
• The national registration does not disappear on its own. It stays alive until you let it lapse or ask the office to cancel it. Many owners keep it running for a term or two as a belt-and-braces measure, then let it go.

Replacement is automatic when the conditions are met. You can also ask the national office to take note of it on its register, which is the step that makes the earlier date visible to anyone searching, and it is worth doing.

When replacement applies

All of these have to be true:

• The holder is the same for both the national registration and the international registration.
• The mark is the same.
• The goods and services in the national registration are covered by the international registration in that country. Replacement can be partial, covering only the overlapping goods.
• The designation of that country in the international registration takes effect after the date of the national registration.

If your international list is narrower than the national one, only the overlapping part is replaced. That is the most common trap. Before you let a national registration lapse, check line by line that the international specification really covers everything you rely on.

Why owners use it

• Portfolio consolidation. One international registration with one renewal date is easier to run than eight national registrations with eight.
• Cost of maintenance. Renewals happen once, through WIPO, rather than office by office with a local agent each time.
• Ownership and address changes. One recordal at WIPO updates every designated country instead of a change request in each.
• Seniority preserved. You get the admin benefits without giving up the older date that a national filing bought you.

The other side: dependency and central attack

For the first five years, an international registration depends on the basic application or registration it was based on. If the basic mark is cancelled or cut back in that window, the corresponding designations are cancelled too. That is central attack.

Two facts drive the planning. An international registration runs for ten years and renews in ten-year blocks. The dependency period is five years from the date of the international registration, and it does not reset.

Note how this interacts with replacement. Replacement protects the earlier national date in a country you already had rights in. It does not insulate the international registration from central attack. If the base is shaky, keeping the national registration alive rather than letting it lapse is the cheap insurance.

Transformation, the safety valve

If a central attack lands, the holder can transform the cancelled designations into national applications and keep the original date of the international registration. The window is three months from the date the international registration is cancelled, and it is short.

The playbook we run with clients:

• Before filing: rate the risk on the base mark. If it is an intent-to-use application with a long road to proof of use, or the register in your sector is crowded, treat that as a red flag and ring-fence key markets with national filings.
• As soon as the international registration issues: calendar the end of the five-year dependency period and set up a transformation checklist with a 90-day action window.
• Keep the evidence ready. Certified copies, translations, and a current goods list mean a national filing can go out in days rather than weeks.
• Pre-approve a transformation budget so procurement does not eat the clock.
• Watch the base mark. Oppositions and non-use challenges against it are the early warning.

The seven-step model we use

Start with the law, then add cost and risk.

1. Confirm what you already own. List every national registration in the countries you plan to designate, with its registration date and its full goods list. That list is what replacement can preserve.
2. Check the overlap. Compare each national specification against the international one, country by country. Note anything that would not be replaced.
3. Snapshot fees on the day you budget. WIPO publishes the basic fee and each country's designation fee, and both move when national schedules move. Use the WIPO fee calculator rather than last year's spreadsheet.
4. Count classes honestly. Both Madrid and national schedules scale with classes. Do not squeeze the goods list just to drop a class if that narrows real use.
5. Forecast local counsel time. If you expect a likelihood-of-confusion refusal or a descriptiveness fight, price it in. Madrid is less attractive when you will be briefing local counsel in several places anyway.
6. Stress-test the five-year dependency. Rate the base filing. Where the risk is high, keep or file national rights in the markets you cannot afford to lose.
7. Docket everything. Centralized renewals are the main benefit of Madrid, but national use requirements and local quirks still need their own reminders.

Where a national filing still beats a designation

• The country's designation fee, multiplied by your class count, meets or exceeds its national schedule once you add likely local counsel time. The UKIPO schedule from 1 April 2026 is 205 pounds for one class and 60 pounds for each further class, which is the number to compare a UK designation against.
• You expect a substantive refusal that needs local counsel either way.
• You need non-standard goods wording that is easier to negotiate directly with the local office.
• You want a key market insulated from the five-year dependency.
• A regional right suits you better. An EU trade mark covers 27 countries in one file. See EU trademark vs national trademark.

A scenario from our desk

A consumer electronics client already held national registrations in Germany and Japan, some of them years old, and wanted twelve countries on one record for 2026. We designated both countries through the international registration, checked the specifications matched, and filed the requests for the national offices to take note of replacement. The German and Japanese dates survived. We kept both national registrations alive through their next renewal as cover for the five-year dependency window, then let them lapse. The client ended up with one renewal date instead of twelve, and no loss of seniority.

Sources

• WIPO: the Madrid System
• WIPO: Madrid System fees
• WIPO: Madrid fee calculator
• UKIPO: trade mark forms and fees