International trade mark protection through the Madrid Protocol can simplify global brand expansion. But what happens when your home registration, i.e. the foundation of that international application, collapses? Or, when a country exits the Madrid system altogether?

The answer lies in a little-known safety net built into the Madrid system, i.e. transformation.

What is “Transformation” in Trade Mark Law?

Transformation allows the holder of a cancelled international registration to convert it into one or more national or regional applications, keeping the same filing or priority dates.

The concept comes from Article 9quinquies of the Madrid Protocol, which gives rights holders a second chance if their basic mark (used as the foundation of the IR) ceases to have effect within the five-year dependency period, or a Contracting Party denounces (withdraws from) the Madrid Protocol.

In both cases, the international registration, or parts of it, may be cancelled. Transformation lets the brand owner refile as a local application, retaining the date benefits of the IR.

Why Would You Need to Transform an IR?

International trade mark registrations are only as strong as their basic application or registration in the country of origin. If the basic mark is withdrawn, refused, cancelled, or partially limited during the first five years, the IR collapses for the corresponding goods or services under Rule 22 of the Common Regulations.

Alternatively, if a country withdraws from the Madrid Protocol (denounces it under Article 15), holders relying on that country as their Office of Origin lose their international registrations connected to it. Here too, transformation of the registration happens.

When Can You Transform in Australia?

Australia allows transformation under Regulation 17A (Division 7) of the Trade Marks Regulations. You can apply to transform an IR into a national application or registration if-

  • The IR has designated Australia, and
  • It has been cancelled (fully or partially) due to the basic mark ceasing to exist during the five-year dependency period, or
  • The IR was cancelled following the denunciation of the Protocol by the holder’s home country.

Key Requirements for Transformation in Australia

To successfully transform an IR into a national application in Australia, you must ensure-

Timing

You apply within 3 months of the cancellation date notified by WIPO (for dependency-based cancellation), or within 2 years of the date the Protocol is denounced (for country withdrawal scenarios).

Eligibility

To be eligible, you must ensure that you’re the holder of the IR that designated Australia, the mark applied for is identical to the cancelled IR, the goods/services covered in the national application are only those that were cancelled in the IR and you provided a valid address for service in Australia or New Zealand.

Fees

There’s no additional transformation fee in Australia. You’ve already paid the required IRDA fees.

The Transformation Process

After cancellation is notified to IP Australia by the International Bureau (IB), the following process follows-

Partial Cancellation (Partial Transformation)

This occurs when only some goods or services are struck from the IR.

  • IP Australia starts a 3-month period from the date of cancellation.
  • You submit a transformation request covering only the cancelled items.
  • A new national trade mark application is created. It receives the next available application number and keeps the priority and filing dates from the IR.
  • The cancelled goods/services are deleted from the original IRDA record.
  • No further fees are required. IP Australia notes that relevant IR fees were already paid.

From there, the new application proceeds through examination, opposition, and registration as usual under Australian law.

Full Cancellation (Full Transformation)

This occurs when the entire IR is cancelled.

  • The process mirrors that of partial transformation.
  • The national application uses the original national trade mark number linked to the IRDA.
  • The national application has all references to the IR removed.
  • The national application retains original priority dates.
  • The national application gets the same endorsement as above.

IP Australia treats the new national application as a standalone file and proceeds accordingly.

Transformation After Denunciation

If the IR collapses due to the denunciation of the Protocol by a Contracting Party, the holder has 2 years from the date of denunciation to transform the IR.

The steps are the same, except the cancellation isn’t triggered by loss of the basic mark, it’s because the Office of Origin is no longer part of the Madrid system.

What If You Don’t Apply in Time?

If you miss the deadline to request transformation, the cancelled goods or services are permanently removed from the Australian trade marks database and if the entire IRDA was cancelled and no transformation request is filed, the trade mark is effectively dead in Australia for those classes.

Transformation is a one-shot safety net. If you don’t act within the time limits, the protection is gone.

Common mistakes to avoid

  • Applying too late- Missing the 3-month (or 2-year) window voids your right to transform.
  • Including the wrong goods/services- The transformed application can only cover items cancelled from the IR.
  • Changing the trade mark- The transformed mark must be identical to the original IR mark.
  • Not meeting the formalities- Incomplete applications, missing service addresses, or misclassified goods can delay or block transformation.

For Australian businesses using the Madrid Protocol to protect their marks overseas, or foreign brands designating Australia, transformation provides a vital safety valve.

It ensures that even if the IR collapses-

  • The brand owner doesn’t lose protection in Australia (or other designated countries that permit transformation),
  • The original filing and priority dates are preserved,
  • There’s no requirement to start from scratch and risk someone else registering the mark.

If you’ve received a notice of cancellation from WIPO, and Australia was designated in your IR:

  • Act fast. Mark your calendar as the 3-month window goes quickly.
  • Check scope. List the exact goods/services cancelled.
  • Prepare your application. Ensure the mark is identical, only the cancelled goods/services are included, and you have an Australian or New Zealand address for service.
  • File with IP Australia.
  • Follow up on examination, opposition, and eventual registration.

Need help pulling this together? An experienced IP advisor can walk you through the transformation and help prevent further losses.

Final Thoughts

The Madrid Protocol gives trade mark owners a powerful system to manage protection worldwide. But when that system falters, because of dependency or political changes, transformation gives you a crucial path to preserve your rights.

If you’re using the Madrid System to protect your brand in Australia, make sure you’re across the rules and timeframes for transformation. The process is generous in what it offers, but only if you act quickly, correctly, and within the window provided.

And if you’re ever unsure, it’s always better to get advice before those windows close.

Contact us to learn more about how LexGeneris can assist you with all your intellectual property needs. You can also schedule a no-cost consultation with our team of expert IP Attorneys Australia, IP Attorneys India, and IP Attorneys New Zealand.

 

Trademarks