A company filed a Madrid international registration designating multiple countries right after its Chinese trademark application was filed and before it had passed substantive examination. The home basic application was later refused over a prior similar mark and the review of refusal also failed, so the international registration was cancelled in its entirety within the 5-year dependency period — wiping out the multi-country layout overnight. (An analysis based on common industry scenarios; it does not refer to any specific case.)
How It Happened
The company planned to expand overseas. To save time, in the very month it received the filing receipt for its Chinese application, it designated six jurisdictions — the US, EU, Japan and others — through the Madrid System and smoothly obtained the international registration certificate. The company believed that "the international certificate has been issued, so the overseas layout is done."
A year later, the home basic application received a refusal notice: a prior similar trademark existed. The company filed a review of refusal but did not succeed. The Office of origin notified the WIPO International Bureau that the basic application had ceased to have effect, and the International Bureau then cancelled the international registration and notified all designated countries. This was less than three years after the international registration date — squarely within the 5-year dependency period — so protection in every designated country was extinguished with it.
Where It Went Wrong
- Filing internationally before the basis was stable: filing Madrid while the Chinese application had just been accepted and substantive examination risk was entirely unknown meant betting the whole overseas layout on a pending application;
- Insufficient pre-filing search: the prior similar mark could have been found by a pre-filing search; changing the mark or adjusting the goods in advance would have avoided the refusal;
- No dual track in core countries: there was no parallel national registration in core markets such as the US, leaving no fallback when the central attack struck.
Remedy and Its Cost
After the international registration was cancelled, the company initiated the "transformation" procedure, filing national applications one by one in the formerly designated countries within the 3-month deadline, preserving the original international registration date as the filing date. But transformation requires paying official fees country by country and engaging local agents, so total spending was several times the original Madrid filing cost; and during the transformation window, third parties had already inserted applications in some countries, so rights in individual markets were never recovered.
Lessons
- Timing is the first principle: file Madrid only after the home application passes substantive examination (preliminary approval publication), by which time most refusal risk has been cleared;
- Pre-filing search is not optional: the basic application itself should be filed only after a thorough search;
- Dual-track fallback in core countries: file a parallel national registration in the one or two most important markets (usually the US), so an independent right survives even if central attack hits;
- Watch the basis during the dependency period: within the five years, actively respond to refusals, oppositions and invalidations against the basic application, and immediately assess the chain effect on the international registration whenever any proceeding fails.
For the specific handling of the matters above, you can book a US trademark registration with MyTMBee, where a registered agent will assist throughout the process.