International registration – replacement or transformation

Here you can find information about a number of special cases regarding international registrations.

You can find information about the following:

  • replacement of a national Swedish trademark registration with an international registration valid in Sweden,
  • transformation of an international trademark registration valid in Sweden to a national Swedish trademark application/registration.
  • conversion of an international registration that has designated the EU but has been totally or partially refused, to a subsequent designation or a national trademark application in one or more EU countries. In other words, a conversion resulting in a subsequent designation or national application.  The possibility to select one or more members of the Madrid Protocol through a subsequent designation or select one or more EU countries through a trademark application is called opting-back.

According to Chapter 5, Section 20 of the Trade Marks Act

The reason for replacement of a Swedish trademark registration with an international registration is usually to have all rights in one place and with one authority (that is, WIPO, World Intellectual Property Organization). It makes managing your trademark portfolio easier.

A condition for replacement is that there is a Swedish trademark registration with the same owner and an earlier application date than the international trademark registration valid in Sweden.

All goods and services that are part of the Swedish trademark registration must be included in the international trademark registration.  

For example:
The Swedish trademark is registered for wines in class 33, and the international trademark is registered for alcoholic beverages in class 33. In that case, the international registration will replace the Swedish registration regarding wines in class 33. The international registration cannot have a narrower scope than the national registration. The goods and services must be equivalent to each other. The Swedish registration will stay valid in the trademark registry as long as it is renewed.

You can apply for replacement as soon as you have designated Sweden in an international registration. Any priority and the application date that the national registration has will be transferred to the international registration.

You apply for replacement with PRV. There is no official application form. The fee to PRV is 1400 SEK. PRV will notify WIPO that a replacement has been registered. Remember to renew the international registration and the Swedish base registration in time, since the international trademark application is dependent on the base registration for a period of five years.

Transformation

According to Chapter 5, Section 22 of the Trade Marks Act

The reason is usually to maintain protection in a country with no conflicting rights. The international registration is dependent on the base registration for a period of five years from the registration date of the international registration. If the base registration is totally or partially cancelled the international registration is also cancelled to the same degree. When the base registration is revoked or cancelled it is called a central attack.

  • You can apply for transformation with PRV within three months from the decision date stating that the international registration has been cancelled. You can only apply for transformation if you have received a decision of cancellation. Only the owner or the representative can apply for transformation.
  • The transformation application can only include the goods and services that was included in the international registration that was valid in Sweden.
  • Any priorities from the international registration will be transferred to the Swedish application. The registration date from the international registration will be the application date for the Swedish application. 
  • The transformed Swedish application will then be examined by PRV the same way any Swedish application would be.

There is no official application form for transformation. Apply by sending in a letter to PRV. Include information about the decision that the cancellation is based on. The fee to PRV for handling the application is the same as the basic fee for a Swedish trademark application sent in by paper form. For each added class there is the same additional fee as for applications sent in by paper form.

According to Articles 202-206 and 139-141 of the European Union Trade Mark Regulation No. 2017/1001 of June 14, 2017

A conversion can be useful when an EU trademark application cannot be registered in only one or some of the countries. In that case, the EU trademark application can be converted to an individual national application in each or some of the other countries.

Conversion is possible when an international registration that has designated the EU has been annulled by EUIPO or the trademark courts and that decision has been registered in WIPO’s international registry. The so-called “opting back” is only possible as long as the international registration has been correctly renewed.  

Conversion is not possible if the international registration is annulled due to failed use. You can convert to most EU countries and members of the Madrid Protocol, and for the goods and services included in the annulment decision. 

You cannot convert the application to the countries where the trademark lacks distinctiveness or has conflicting rights according to the EUIPO or the trademark courts.

For example: if a trademark includes English words and has been refused due to lack of distinctiveness, conversion is not possible in Great Britain, Ireland or Malta.   

If an international registration that has designated the EU has been revoked due to a national trademark, it cannot be converted to that particular country. It this case EUIPO will cancel the conversion.

When converting to a national application you get the same application date as the international registration. Any priorities will be transferred to the national application. When converting to a subsequent designation you get the application date of the original designation of the EU.

The time frame for conversion is three months, counting from the day of the office decision or the final decision from the court. Submit the application for conversion to EUIPO. Use the form called ”Application for Conversion of an International Registration designating the EU”. For so-called “opting back” within the Madrid Union you can also use the WIPO form MM16. For fees, see EUIPO and WIPO websites. The fee must be paid within the three-month period.

EUIPO (external website)

WIPO (external website)

 

Read more

Trademark and Design Guidelines, EUIPO (external website)
(See part E Register Operations, section 2 Conversion)

Guide to the International Registration of Marks, WIPO (external website)
(See part B, chapter II B.43.01)