Recently, some clients have asked about the subsequent designation of the Madrid international trademark registration. Usually, after the Madrid international trademark registration, the trademark registrant designates other contracting parties for trademark protection for the same trademark application. Requires the protection of its internationally registered trademark in the expanded designated contracting party countries. This designation is often called a "subsequent designation." In nature, an application for subsequent designation is equivalent to an application for international registration of a trademark, and its purpose is also that the applicant hopes that its trademark can be protected in the designated contracting party in the application for subsequent designation.

The applicant qualifications for subsequent designation, domestic basic registration, the relationship between the basic application and the contracting party for subsequent designation are basically the same as the application for international trademark registration, but the scope and category of goods or services may be different. different. Differentiation means narrowing the range or reducing the category of goods or services.

If the registrant of my country’s international trademark registration applies for subsequent designation related to the Madrid Agreement, the application should be submitted to the International Bureau through the Trademark Office. To apply for subsequent designation related to the Madrid Protocol, the application can be submitted to the International Bureau through the Trademark Office, or the applicant can submit the application directly to the International Bureau. If an application is submitted to the International Bureau through the Trademark Office, the English or French application form and the Chinese application form should be completed and submitted. If the applicant submits the application directly to the International Bureau, he only needs to fill in and submit the foreign language application. Whether the application is submitted to the International Bureau through the Trademark Office or not through the Trademark Office, the applicant can decide whether to entrust an agent to represent him or her according to his or her own wishes. The later designated English application form is "MM4(E)" and French is "MM4F(F)". Applicants can download it from the International Bureau website. The Chinese application form specified later will be provided by the Trademark Office.

After receiving the late-stage designation application, the Trademark Office will conduct a formal review, but will not conduct a substantive review. The review procedures are basically the same as those for territorial extension applications (including review of fees). After the examination is completed, the Trademark Office will send the application to the International Bureau.

After receiving the application for subsequent designation, the International Bureau will conduct a formal examination, register it in the register, and announce it. In addition, the International Bureau sends an application for subsequent designation to the Office of the Contracting Party to be subsequently designated.

Since an application for subsequent designation is equivalent to an application for international registration protection of a trademark, this determines that the Office of the Contracting Party that is subsequently designated will conduct a substantive examination of the application for subsequent designation in accordance with the laws of that Contracting Party. The review procedure is essentially the same as for an application for territorial extension. After review, if it is deemed to comply with legal provisions, protection will be granted. Since the International Bureau announces applications for subsequent designation, the contracting party designated by the latter can no longer publish the trademark approved for protection. Even if it is published, the applicant is not obliged to pay the publication fee. Other agencies have no right to require the applicant to publish its trademark in the Contracting Party designated later. If, upon review, it is found that the application for subsequent designation does not comply with legal provisions, the Office of the Contracting Party designated for subsequent designation shall reject the application and notify the International Bureau in writing. The time limit for refusal depends on the fact that the subsequently designated Party is bound by the Madrid Agreement or the Madrid Protocol. The date of rejection begins on the notification date on the subsequent designation application. After receiving the notification of refusal, the International Bureau will send the notification of refusal to the applicant or his agent. If the applicant is dissatisfied with the rejection, he may apply to the review authority of the subsequently designated Contracting Party for review within the legal period specified in the rejection notice, or file a lawsuit with the judicial authority.