Questions and Answers Section 1 Question:
Subsequent designation is not possible in two situations. The first is where the Contracting Party
concerned is also the Office of origin. What is the second? Please provide an explanation with your answer. Answer:
A subsequent designation is also not possible where the Contracting Party has made a
declaration under Article 14(5) of the Madrid Protocol.
Some members have made such declaration, meaning that it may not be possible to record a
subsequent designation for those Contracting Parties where the date of the international
registration is prior to the date when the Madrid Protocol entered into force in that Contracting Party concerned.
In this case, to use the Madrid System for protecting the mark in the Contracting Party
concerned, a new international application designating that Contracting Party has to be filed. Question:
For a Contracting Party subsequently designated, when does the time limit begin for issuing a
provisional refusal, either totally or partially, in their territory, in accordance with their national or regional legislation? Answer:
For a subsequent designation, the time limit for issuing a provisional refusal begins from the
date on which WIPO has notified the Office of the designated Contracting Party of the
subsequent designation concerned (notification date). Question:
When does the period of protection for a subsequent designation expire? Answer:
A subsequent designation does not have an independent lifetime, but follows the 10-year
protection cycle of the international registration.
The period of protection for a subsequent designation expires on the same date as the
international registration to which it relates. Question:
WIPO will examine a subsequent designation for compliance with formality requirements and
an irregularity notice will be issued if WIPO considers the subsequent designation to be irregular.
If the subsequent designation was submitted directly to WIPO, who will be notified of the irregularity? Answer:
WIPO will notify the holder. Section 2 Question:
Changes to an international registration that have effect in some or all of the Contracting Parties
concerned may occur during its lifetime.
The main rule is that such changes, once recorded in the International Register, will have a
direct effect in the designated Contracting Parties concerned, without the national or regional IP Office having any say in this.
There are exceptions to this rule. What are those exceptions? Answer:
A Contracting Party may declare that a change in ownership, limitation to the list of goods and
services, or the recording of a given licence has no effect in the designated territory. Question:
A holder requests a limitation of the list of goods and services in an international registration in
respect of all or some of the designated Contracting Parties. Will this request affect the goods
and services of the main list of the international registration? Please explain your answer. Answer:
No, the request for limitation will not affect the goods and services of the main list of the international registration.
While the goods and services subject of the limitation will no longer have effect in the
designated Contracting Party concerned, they will not be removed from the main list of the
international registration and these can later be subject of a subsequent designation for the same Contracting Party. Question:
What is the outcome for an international registration where WIPO has recorded a total
cancellation of the international registration at the request of its holder? Answer:
A total cancellation applies to all the designated Contracting Parties and all goods and services
covered by the international registration. With the recording of a total cancellation, the
international registration will no longer be in force. Question:
A holder has requested the recording of a renunciation in respect of some of the Contracting
Parties designated in the international registration. Is it possible for the holder, at a later date,
to subsequently designate the Contracting Parties that were renounced? Answer:
Yes, it is possible for the holder, at a later date, to record a subsequent designation for the
designated Contracting Parties which are the subject of the renunciation. Question:
Are there any requirements that must be met by the transferee before a change in ownership of
an international registration may be recorded by WIPO? Answer:
Yes, the change in ownership may only be recorded if the new owner is a person who is entitled
to file international applications under the Madrid System, i.e. connected to any Contracting
Party of the Madrid System by establishment, domicile or nationality. Scenario Answers
Lifetime of a Subsequent Designation
The renewal fees have to be paid for all Contracting Parties covered by the international
registration on the due date of August 20, 2019. In this case, Japan, Australia, and New Zealand.
This is because a subsequent designation has no independent protection period, but the period
of protection for a subsequent designation expires on the same date as the international
registration to which it relates. Renewal fees for all the designated Contracting Parties must be
paid at the time of renewal of the international registration. Subsequent Designation
No, the holder cannot designate the three Contracting Parties they have selected on the MM4.
Footnote 7 on the form states that it is not possible to subsequently designate India and the
Philippines in respect of an international registration effected prior to them joining the Madrid
Protocol. In the case of India, the relevant date is July 8, 2013, and the Philippines – July 25, 2012.
The date of international registration 605000 is June 16, 2003, so it is not possible for the holder
of this international registration to subsequently designate India and the Philippines.
They may, however, subsequently designate the European Union.
Subsequent Designation – Holder of the International Registration
No, WIPO will not record the subsequent designation based on the information in the MM4 form.
The holder’s name is still recorded as XYZ Pty Ltd in the International Register. Because of this,
the subsequent designation should have been submitted in that name.
If the holder had checked box (b) in item 7 and requested the subsequent designation take
effect immediately after the change in the name is recorded, then WIPO would record the
subsequent designation after the change in the name has been processed.
Goods and Services Concerned by the Subsequent Designation
The holder should check box (c) in item 5 of the MM4 form.
The subsequent designation is made only for the goods listed in the continuation sheet in
respect of New Zealand and Singapore, and for all the goods and services listed in the
international registration in respect of France. Complete MM4 Form
No, the subsequent designation is not complete and cannot be recorded by WIPO.
The MM4 is either missing information or the information which does not match the
international registration concerned.
The subsequent designation has the following issues: 
Two holders are listed in the subsequent designation, however, the international
registration is in the name of Rachael Dancer only. 
The holder has not indicated the goods and services concerned by the subsequent designation in item 5.