Subsequent designations: one step closer to global expansion

The Madrid System for the International Registration of Marks, administered by the World Intellectual Property Organization (WIPO), offers brand owners an efficient way to seek trademark protection in multiple jurisdictions with a single application. After an international registration (IR) is granted, rights holders may wish to expand protection to additional countries or regions not originally designated. This process is called a subsequent designation.

What is a Subsequent Designation?

A subsequent designation is the formal request to extend the protection of an existing international registration to additional Madrid Protocol member countries. Unlike the initial filing, which must include all intended jurisdictions, a subsequent designation allows trademark owners to add new territories after registration or at a later stage of their brand expansion strategy.

Key points:

• Available only to holders of an existing international registration (IR).
• Extends protection to new member countries of the Madrid Union.
• Can be filed at any time during the life of the international registration.

Why File a Subsequent Designation?

Trademark owners often expand their businesses gradually. Filing a subsequent designation allows flexibility in aligning trademark protection with commercial growth. Benefits include:

1. Cost efficiency – One procedure instead of multiple national applications.
2. Simplified management – Centralized record-keeping through WIPO for renewals and updates.
3. Strategic timing – Protection can be extended when entering new markets, avoiding premature costs.
4. Consistency – Same international registration number across all designated countries.

How to File a Subsequent Designation

1. Filing Methods

There are two ways to file:

• Directly with WIPO: Online via the Madrid eSubsequent Designation (e-SD) service.
• Through a national/regional office: Some countries allow or require filings through their local trademark office, which then transmits the request to WIPO.

2. Required Information

When filing, the applicant must provide:

• International registration (IR) number.
• Holder’s name and address.
• Countries/regions to be subsequently designated.
• Goods and services for which protection is sought (may apply to all or some of the IR’s list).

3. Fees

• WIPO handling fee (fixed amount).
• Individual designation fees per country/region (varies depending on the Contracting Party).
  Fees must be paid in Swiss francs (CHF). WIPO’s fee calculator helps estimate the cost.

4. Examination Process

• WIPO examination: Formalities check (correctness, fees, admissibility).
• Publication: The subsequent designation is published in the WIPO Gazette.
• Notification: WIPO forwards the request to each designated IP office.
• National examination: Each office examines the request under its domestic laws and may approve or refuse protection.

Validity and Renewal

• A subsequent designation becomes part of the original international registration.
• It shares the same renewal date as the IR, regardless of when the designation was added.
• If the IR is not renewed, the protection from the subsequent designation lapses as well.

Practical Considerations

1. Timing – File early enough before market entry to allow time for examination and potential refusals.
2. Goods/Services – Tailor to specific markets; local requirements may differ from those accepted in the IR.
3. National Laws – Protection is subject to each designated office’s substantive law.
4. Refusals – A refusal in one country does not affect designations in others.
5. Record-Keeping – Subsequent designations are recorded in the Madrid International Register, making monitoring and enforcement easier.

Conclusion

A subsequent designation under the Madrid System is a powerful tool for businesses expanding into new markets. It provides a streamlined, cost-effective, and flexible means of securing trademark rights internationally. By understanding the process, requirements, and strategic implications, trademark holders can align their intellectual property protection with their global business growth.