60.3. The Basic Application or Basic Registration (Basic Trade Mark)

Date Published

3.1  Relevant Legislation

Madrid Protocol

Article 2 Securing Protection through International Registration

Article 6 Period of Validity of International Registration; Dependence and Independence of International Registration

Madrid Protocol Regulations

Rule 22 Ceasing of Effect of the Basic Application; of the Registration Resulting Therefrom, or of the Basic Registration

Rule 23 Division or Merger of the Basic Applications, of the Registrations Resulting Therefrom, or of the Basic Registrations

Trade Mark Regulations

​​​​​​​Regulation 17A.6 (1) Eligibility to apply for international registration

3.2  General Description

An international application must be based on an existing application or registration (basic trade mark) in a contracting party to the Madrid Protocol. The international application must have the same owner(s) as the identical mark and cover the same, or some of the goods and/or services as the basic trade mark.

An international application may have more than one basic trade mark.  

3.3  Five Year Dependency

The international registration is dependent on the basic trade mark(s) for a period of 5 years after the application for international registration is filed.

The Australian holder of an international registration needs to ensure that their basic trade mark does not cease within the 5 year dependency period. As the Office of origin, IP Australia must notify the IB when:

  • a basic trade mark ceases to exist within this period, or
  • the scope of a basic trade mark is restricted during this period, or

  • the basic trade mark ceases to exist or is restricted as a result of an action which commenced within this period.

IP Australia must therefore monitor Australian basic trade marks for any of the following changes:

  • the basic trade mark application lapses, or

  • the basic trade mark application or registration is restricted (i.e. some of the goods and/or services are deleted), or

  • the basic trade mark registration is cancelled, or

  • the basic trade mark application is withdrawn, or

  • the basic trade mark registration is removed, or

  • the basic trade mark registration is not renewed

Once notified, the IB cancels the international registration to the same extent, and notifies all designated countries as well as the holder of the international registration.

The international application, or resulting registration, cannot be revived even if the basic trade mark is revived. However, within three months of the cancellation, the holder can file a national application with the same details in any or all of the designated countries and claim the priority date of the international registration. This is called Transformation (see Part 60 - 4.25 Transformation).

If a basic trade mark is cancelled in error, the Office of Origin has 9 months in which to inform WIPO of the error and request that it be rectified. WIPO will then inform the designated contracting parties that the cancellation is null and void.

3.4  Monitoring Basic Trade Marks

A program is run by the International Registration Section of COG at predetermined intervals.

The list will be manually checked to determine if the change has any effect on the relevant international registration (for example it may be that the goods and/or services affected by the amendment were not included in the international registration). If more than five years has elapsed since the international application was filed and the restriction did not result from an action that commenced within that 5 years, the change does not affect the international registration and the IB does not need to be notified.

Where the amendment or status change to the basic trade mark(s) affects an international registration, the IB must be notified of the restriction and requested to cancel the international registration to the same extent.

3.5  Additional Basic Trade Mark Information

3.5.1  Divisional Application

The IB may need to be notified when a divisional application is filed.

Australian applications used as the basic trade mark for an international application or the resulting international registration may have a divisional application filed for some of the goods and/or services and the same trade mark. If a divisional application results in the goods and/or services of the international application being covered by more than one basic trade mark the IB will need to be notified so that they can record the number of the additional basic trade mark in the International Register.  The IB will, in turn, advise the designated countries of the additional Australian basic trade mark number and the goods and/or services which it covers.

Note: Divisional applications will be checked to see if the relevant parent trade mark is a basic trade mark.  If the parent application is a basic trade mark the following questions will apply:

  • is the divisional application for some of the goods and/or services contained in the parent trade mark?
  • is it less than 5 years from the date the international application was filed in IP Australia?

If the answer to both these questions is YES, the IB must be notified of the additional basic number.  The IB will then amend the International Register to add the extra basic trade mark number(s) and notify each designated country.

Note: It is not possible to file an Australian divisional application from an International Registration Designating Australia (IRDA).

3.5.2  Assignment of the Basic Trade Mark

It is possible to assign ownership of the basic trade mark on which the international registration is based, without changing the ownership. However, if this occurs within the 5 year dependency period, any subsequent changes made to the basic trade mark by the new owner will still impact on the international registration. Holders should therefore exercise great care when assigning a basic trade mark within that 5 year period.

Amended Reasons

Amended Reason Date Amended

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