60.4.26 Replacement

4.26.1  Relevant Legislation

Madrid Protocol

Article 4bis Replacement of a National or Regional Registration by an International Registration

Madrid Protocol Regulations

​​​​​​​Rule 21 Replacement of a National or Regional Registration by an International Registration

Trade Mark Regulations

Regulation 17A Division 8 Concurrence between registration and international registration

4.26.2 General Description

It is possible that the holder of an IRDA may already own an existing Australian trade mark registration for the same trade mark and containing some or all of the goods and/or services claimed in the IRDA.

If all the goods and/or services of the national registration are also covered by the IRDA, and the IRDA is granted protection in Australia, the holder can request that the protected international trade mark replace the existing registration.  The holder will benefit by the protected international trade mark being given the earlier priority date from the national registration for the relevant goods and/or services.  

4.26.3  Process

During the examination of an IRDA the examiner may locate a national registration for the identical trade mark, with the same owner and containing the goods and/or services specified in the IRDA.  

A replacement can only take place if the national trade mark is registered and the IRDA has been granted protection in Australia.

Once a national registration is deemed to be replaced by an international registration, the protected international registration will retain the priority date of the earlier registration with respect to the goods originally covered by the national registration.

Once replacement has been requested by the holder and has occurred, the holder need not renew the national registration in order to retain the priority date for the protected international trade mark.  However, it would be in the interest of the holder of the international registration to renew the national registration if the international registration is still within the 5 year period during which it is dependent on the fate of the basic application or registration.

The Regulations provide for the national registration to remain on the Register until it is:

• not renewed,

• cancelled at the request of the owner,

• cancelled by order of the court, or

• removed after a successful non use action.

Once replacement has occurred, the following endorsement will be placed on the protected international trade mark:

By virtue of Article 4bis of the Madrid Protocol the priority date <day month year> based on national registration number(s) <123456> applies to the following goods/services <>.

Once replacement has occurred, the following endorsement will be placed on the national registration:

Article 4bis of the Madrid Protocol applies; this registration may be replaced by <protected international registration number>.