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 a protected international trade mark may already own an existing Australian trade mark registration for the same trade mark containing some or all of the goods and/or services claimed in the protected international trade mark, and which has an earlier priority date than the protected international trade mark in respect of those goods and/or services.

If the protected international trade mark is granted protection in Australia, the protected international trade mark is deemed to replace the existing national 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. On request by the holder, this replacement will be recorded on the Register.  

Replacement can be described as either:

• “full replacement”, if all the goods and/or services of the national registration are also claimed in the protected international trade mark; or
• “partial replacement”, if some of the goods and/or services of the national registration are also claimed in the protected international trade mark.

4.26.3 Process

Replacement occurs where the same owner/holder has a national registration and a protected international trade mark for an identical trade mark, and the national registration contains some or all of the goods and/or services specified in the protected international trade mark, and has an earlier priority date than the protected international trade mark in respect of those goods and/or services.

Replacement can only take place if the national trade mark is registered and the protected international trade mark has been granted protection in Australia. If the requisite conditions are met, the holder may request that the replacement of the national registration (in respect of the relevant goods and/or services) by the protected international trade mark is recorded on the Register (see endorsements below).  

Once a national registration is deemed to be replaced (either fully or partially) by a protected international trade mark, the protected international trade mark will take the priority date of the earlier national registration with respect to the goods and/or services that are also covered by the national registration.

The protected international trade mark will retain this earlier priority date even if the national registration is:

• not renewed;
• cancelled at the request of the owner; or
• amended at the request of the owner such that the replaced goods and/or services are no longer covered by the national registration.

This means that the holder can allow their national registration to expire and renew only the protected international trade mark, which will retain the earlier priority date.

However, it would be in the interest of the holder of the protected international trade mark to maintain 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.

Conversely, the protected international trade mark will not retain the earlier priority date if the national registration is cancelled, removed or otherwise no longer registered (in respect of the relevant goods and/or services) other than by expiry or at the request of the owner.

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.

On request by the holder of the protected international trade mark, replacement is recorded as follows:

• 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 <>.

• The following endorsement will be placed on the national registration:

For a full replacement:

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

OR

For a partial replacement:

Article 4bis of the Madrid Protocol applies; this registration may be replaced by <protected international registration number> in respect of the following goods/services <>.