Madrid Replacement: Keeping Your Earlier Rights

Replacement is one of the most useful features of WIPO's Madrid System (the Madrid Protocol) and one of the least understood. In plain words: if you already own a national registration in a country, and you later cover 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 system works, read the guide to WIPO's Madrid System first, and see WIPO or direct filing for the route decision. This one assumes you already own national rights.

What Replacement Does

Replacement is set out in Article 4bis of the 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 owner is the same for both the national registration and the international registration.
• The trademark 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 international registration's protection in that country 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 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 qualified local attorney each time.
• Ownership and address changes. One change recorded at WIPO updates every country on the registration 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 home trademark it was built on: the application or registration at the trademark office in your home country. WIPO calls it the basic mark. If the home trademark is canceled or cut back in that window, the matching protection in each country is canceled 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 home trademark 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 owner can transform the canceled protection in each country into a national application there and keep the original date of the international registration. The window is three months from the date the international registration is canceled, and it is short.

The playbook we run with clients:

• Before filing: rate the risk on the home trademark. 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 countries 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 home trademark. 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 cover, 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 the fee for each country, and both move when national schedules move. Use the WIPO fee calculator rather than last year's spreadsheet.
4. Count classes accurately. Both WIPO and national schedules scale with classes. Do not squeeze the goods list just to drop a class if that narrows what you use.
5. Forecast local attorney time. If you expect a likelihood-of-confusion refusal or a descriptiveness fight, price it in. The WIPO route is less attractive when you will be briefing a qualified local attorney in several places anyway.
6. Stress-test the five-year dependency. Rate the home trademark. Where the risk is high, keep or file national rights in the countries that matter most to you.
7. Docket everything. Centralized renewals are the main benefit of WIPO's Madrid System, but national use requirements and local quirks still need their own reminders.

Where a National Filing Still Beats the WIPO Route

• The country's fee through WIPO, multiplied by your class count, meets or exceeds its national schedule once you add likely local attorney 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 the United Kingdom's fee through WIPO against.
• You expect a substantive refusal that needs a local attorney either way.
• You need non-standard goods wording that is easier to negotiate directly with the local office.
• You want a key country insulated from the five-year dependency.
• A regional right suits you better. An EU trademark 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 covered both countries in 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.