The short answer
A Madrid international registration depends on its basic mark for five years from the international registration date. If the basic protection ceases wholly or partly, the international registration can be affected to the corresponding extent. This matters before withdrawing, narrowing or allowing the basic mark to expire.
Record the basic mark and international date separately
The basic mark is the national or regional application or registration supporting the international application. It provides the starting point for the sign and specification. An international certificate does not immediately make that foundation unnecessary, even where individual target markets have already granted protection.
Record both reference numbers and the international registration date. The five-year dependency is not simply calculated from the original Swiss application date. Keep notices of changes to the basic mark as well. If a problem arises, these records help identify the goods and international rights potentially affected.
Sources: WIPO: requirements for a Madrid application · WIPO: Madrid Guide, dependency and transformation
One problem with the basis can affect several countries
The WIPO guide identifies events such as final refusal, withdrawal, cancellation or expiry of the basic mark. Consequences follow the relevant extent and need not cover every product. Proceedings started within the five years may also remain relevant when they conclude after that period ends.
Do not assess an apparently local settlement solely through the Swiss business. Agreed removal of goods may affect international plans. Give your adviser the complete link between the basic mark and international registration before making an irreversible declaration or deliberately allowing a renewal to pass.
Review remaining options promptly after an attack
The Madrid guide describes transformation into national or regional applications, subject to conditions, when an international registration is cancelled because the basic mark has ceased to have effect. This route has its own requirements, deadlines and costs. It is not an automatic repair and needs prompt review of the actual notice.
Assign responsibility and an accessible correspondence address for the basic mark too. International rights generally become independent after the dependency period, subject to proceedings begun in time. Local objections, use requirements and renewals do not disappear. Each designated territory still needs ongoing attention within the portfolio.
Sources: WIPO: Madrid Guide, dependency and transformation · WIPO: basic marks and five-year dependency
What you can do now
- Link the basic mark and international registration by date and specification.
- Check international consequences before withdrawal, restriction or non-renewal.
- Have notices about loss of the basis reviewed immediately for possible next steps.
Frequently asked questions
Does a subsequent designation start a new dependency period?
The Madrid guide explains that subsequent designations do not have a separate new dependency period. The relevant period remains the one starting on the international registration date.
Are all later challenges excluded after five years?
No. Proceedings against the basic mark begun in time may still have consequences. Separately, rights in designated territories can be challenged under their own applicable rules.