The UK has updated its trademark legislation to allow for the partial replacement of domestic trademarks with international registrations under the Madrid System.
Changes to the legislation
The Trade Marks (International Registration) Order 2008 has been amended to implement changes to Rule 21 of the Madrid Protocol Regulations. These changes relate to requests for the replacement of UK trademark registrations with international registrations.
This means domestic trademarks can be partially replaced by international registrations. This will be possible even when they only cover some of the goods and services listed in the domestic registration.
Previously, replacement was only allowed when the international registration covered all goods and services in the domestic registration.
The amendment came into force on 21 November 2024. It ensures UK compliance with Madrid Protocol obligations ahead of the February 1, 2025 deadline. It aligns UK practice with updated international requirements.
What this means for trademark holders
Trademark holders can now:
- Replace their UK trademark registration with an international registration that covers fewer goods and services
- Maintain protection for goods and services not covered by the international registration through their existing UK registration.
A UK Intellectual Property Office (UKIPO) Spokesperson said: “These changes align UK practice with updated international practice and ensure compliance with the Madrid Protocol regulations. We have updated the Manual of Trade Marks Practice to reflect this. Any customers requiring further details can get in touch with the IPO’s information center in the usual way.”
Further information
Full details of the legislative change can be found in the Trade Marks (International Registration) (Amendment) Order 2024.
The Manual of Trademarks Practice – International Examination Guide has been updated to reflect these changes.
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