How can trademark owners transition from a national or regional registration to an international registration in a designated territory without prejudice or loss of priority dates? The principle of “replacement” allows a designation under an international registration to replace an existing national trademark registration, maintaining the earlier priority date, but allowing a national registration to lapse without prejudice to the trademark owner. This is a defining feature of the Madrid Protocol international trademark registration system, established by Article 4bis and defined further under Rule 21.
Previously, for an international designation to replace a national or regional mark, it must (1) be protected in the designated territory, (2) be the same mark held by the same owner, (4) post-date the date of the existing national or regional registration, and most relevant here, (5) cover all of the same goods and services covered by the existing national mark.
However, during its fifth-third session, the Madrid Union Assembly adopted an amendment to Rule 21(3)(d), requiring member countries to permit partial replacement of earlier national registrations—an amendment that went into effect on February 1, 2021. The deadline for members to implement this amendment was extended to February 1, 2025, and effective June 2, 2025, the USPTO has modified its procedures in 37 CFR 7.28 to reflect this amendment, per the final rule.
What does this mean for trademark owners? Now an international registration is not required to cover identical goods and services as that of the existing national mark. So long as there is some overlap between the goods and services covered by the existing mark and sought to be covered by the international registration, a partial replacement can occur. For those goods and services that are not included on the new international registration, the amendment to Rule 21 allows the national registration to coexist and maintain full protection of previously covered goods and services. The USPTO has updated § 7.28 to require the submission of more information, allowing the USPTO to process requests for partial replacements. This includes a specification of the goods or services for which replacement is sought, whether for full or partial replacement.
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