60.4.25 Transformation

4.25.1  Relevant Legislation

Madrid Protocol

Article 9 ^quinquies Transformation of an International Registration into National or Regional applications

Article 15 Denunciation

Madrid Protocol Regulations

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

Trade Mark Regulations

Reg 17A Division 7 Transformation of cancelled international registrations

4.25.2  General Description

The Madrid Protocol provides for the transformation of an IRDA or protected international trade mark into a national application.

There are two circumstances in which an IRDA or protected international trade mark could be transformed:

• The basic trade mark has ceased to exist or its scope has been limited in the Office of origin within the 5 year dependency period or as a result of an action that commenced within that period.  The Office of origin notifies the IB and the international registration is cancelled to the same extent.  The holder of the IRDA or protected international trade mark has three months from the cancellation date of the international registration to transform their IRDA or protected international trade mark into a national application or registration.
• If a Contracting Party denounces the Madrid Protocol, holders would be given two years from the date of the denunciation to transform their IRDAs or protected international trade marks into national applications or registrations.

The application for transformation must:

• be received by IP Australia within three months of the effective date of the full or partial cancellation of the international registration, or within two years of denunciation of the Protocol;
• be made by the holder(s) of the IRDA or protected international trade mark;
• be for the identical trade mark;
• be for only goods and/or services cancelled from the IRDA or protected international trade mark;
• include an address for service in Australia or New Zealand.

Fee - There is no transformation fee in Australia.

If the application for transformation is not in order, transformation cannot take place and the holder/applicant will be notified of the problems.

4.25.3  Transformation Process for a cancelled International Registration

The IB notifies IP Australia of the full or partial cancellation of an international registration that had designated Australia.

IP Australia notes the cancellation and starts a three month time period dating from the effective date of the IB's cancellation of the international registration.  This is to allow the holder to apply for transformation of their IRDA or protected international trade mark into a national application/registration.

4.25.3.1 Partial Transformation

• Partial transformation applies where only some of the goods and/or services of the international registration were cancelled.
• The IB notifies IP Australia that the International Registration has been cancelled at the request of the Office of origin.  A time period of three months, starting from the date the IB cancelled the international registration, is set to allow for transformation, if requested by the holder.
• IP Australia receives an application to transform some or all of the cancelled goods and/or services within the three month period.
• The transformation application is checked to ensure that it is:
• for only the cancelled goods and/or services, and
• for the identical mark.
• The cancelled goods and/or services become the subject of a new national trade mark with the next available Australian trade mark number.
• An endorsement is entered which reads: By virtue of Rule 22 of the Regulations under the Protocol, <Original Australian trade mark number> was partially transformed from international registration number <123456> to a national application/registration on <date of transformation>.
• The cancelled goods and/or services are deleted from the IRDA or protected international trade mark.
• The transformed application or registration retains any priority date(s) applicable to the goods and/or services transformed from the IRDA or protected international trade mark.
• The equivalent of filing and registration fees have already been paid in Australia’s individual fee, so no additional filing and registration fees will be required.  These fees will be recorded as paid on the transformed files.
• A standard notice is generated and sent to the address for service in Australia or New Zealand.
• Transformation is published in Australian Trade Mark Search.
• Examination, opposition or registration continues on the new national application or registration containing the cancelled, transformed goods and/or services.

4.25.3.2 Full Transformation

• The IB notifies IP Australia that the international registration has been cancelled at the request of the Office of origin.  A time period of three months, starting from the date the IB cancelled the international registration, is set to allow for full or partial transformation, if requested by the holder
• IP Australia receives an application to transform some or all of the cancelled goods and/or services within the three month period.
• The transformation application is checked to ensure that it is:
• for only the cancelled goods and/or services, and
• for the identical mark.
• As outlined above, the IRDA or protected international trade mark is transformed into a national application or registration.
• Reference to the international registration number is deleted, together with any clocks and information which were necessary for processing the international registration in Australia.
• The file retains the national number allocated when IP Australia received notification of the IRDA from the IB.
• An endorsement is entered which reads: By virtue of Rule 22 of the Regulations under the Protocol, < Australian trade mark number> was transformed from international registration number <123456> to a national application/registration on <date of transformation>.
• The transformed application/registration retains any priority date(s) applicable to the goods and/or services transformed from the original international registration.
• No additional filing and registration fees will be required.  
• A standard notice is generated and sent to the address for service in Australia or New Zealand.
• Transformation is published in Australian Trade Mark Search.
• Examination, opposition or registration continues.

4.25.4 Transformation after denunciation of the Protocol

This occurs when IP Australia is notified by the IB of the date denunciation became effective in a Contracting Party (CP). The international registration, which has designated Australia, is then cancelled because the holder's Office of origin is no longer party to the Madrid Protocol.  

4.24.5  No Request for Transformation

If an application for transformation is not received within the relevant period of 3 months after the international registration is cancelled or 2 years after denunciation occurs, the IRDA or protected international trade mark is cancelled for the goods and/or services concerned.  

• Partial cancellation of the International Registration - The goods and/or services of a partial cancellation are deleted from the Record of International Registrations on the Trade Marks Office database.  
• Full cancellation of the International Registration - The IRDA or protected international trade mark is cancelled.