The post designation, change, and transfer of Madrid international trademarks, a list of the rules, deadlines, and common misconceptions for handling in 2026, and which step is most likely to be missed in the post designation process

The most easily overlooked step in the later stage of specification is that many people only focus on whether the new country can be registered, but do not synchronize the "effectiveness status of basic registration" when submitting. Under the Madrid system, later designation is dependent on international registration, which in turn is dependent on the underlying trademark of the original office. If the basic registration is revoked, successfully opposed, or not renewed during the later designated review period, the later designation will become invalid. In practice, we generally recommend that customers retrieve the current status and renewal window of the basic registration before submitting the later designation, confirm that there will be no power vacuum in the next 5 years, and then proceed with payment.

The later designation is not a new application, it is hanging on the tree of international registration

Many overseas companies, when they first encounter the Madrid trademark, will understand it as "one application, globally applicable". This impression is only half true. The core of the Madrid system is International Registration, which is managed by the International Bureau of the World Intellectual Property Organization (WIPO). The enterprise first submits an international application through the original office, obtains an international registration number, and then expands the scope of protection to new contracting parties through subsequent designation. The key point is that the designated application date, examination process, and rejection deadline in the later stage will follow the original international registration, rather than starting a new independent application date.

This means two things. Firstly, the designated official fee structure in the later stage is "basic fee+supplementary fee or separate fee for each designated country", rather than re paying all fees as in the new application. Secondly, if the original international registration is completely or partially cancelled due to a "Central Attack" on the underlying trademark issue, the subsequent designation will also be affected simultaneously. According to Article 6 of the Madrid Protocol, the effectiveness of an international registration still depends on the underlying trademark within 5 years from the date of registration; Independence will only be achieved after 5 years. So the best window for later designation is usually after 5 years of international registration, or at least after confirming the stability of the underlying trademark within these 5 years.

Processing rules: Who can submit, when to submit, and how much to pay

The designated applicant in the later stage must be the holder of the international registration in person or a registered agent. There are two submission channels: one is to transfer to WIPO through the original office, and the other is for some contracting parties to allow direct submission to the WIPO International Bureau. Chinese applicants are still mainly transferred through the China National Intellectual Property Administration (CNIPA), which will remain unchanged in 2026. After receiving it, WIPO will conduct a formal examination to verify the category of goods and services, designated contracting parties, and whether the fees are complete. After the formal examination is approved, it will be registered and notified to each designated office.

In terms of fees, the designated official fees in the later stage consist of three parts: a basic fee (currently 300 Swiss francs, which would be higher if submitted through paper), a supplementary fee (100 Swiss francs per category for contracting parties that have not separately charged fees), and a separate fee (for contracting parties that charge separate fees such as the United States, the European Union, Japan, and South Korea). The USPTO's separate fees are charged by category and will remain in the range of approximately $400-600 per category until 2026, depending on the submission method and the number of items. The separate fees for the EU IPO are 820 euros for the first category, 50 euros for the second category, and 150 euros for each category of the third category and above. These numbers may be adjusted annually, and it is recommended to check the latest fee schedule on the WIPO official website before making payment.

Change registration: Do not delay any changes to the holder's name, address, or agent

International registration changes (name and address changes outside of ownership, agent changes) require a formal request to be submitted to WIPO. Many customers may ask: Our company has changed its name, will we wait until the next renewal to make the changes together? It is not recommended to delay in practice. The reason is straightforward: if the holder's name does not match the official registration, subsequent designation, renewal, and even rights protection procedures may be required to be corrected first. WIPO charges a handling fee of 150 Swiss francs for name and address changes (for each change), and the same fee applies to agent changes. After the change request is submitted, WIPO will review and register it, and notify the relevant designated office.

There is an easily overlooked detail here: change registration does not equate to automatic synchronization to local records in designated offices. USPTO in the United States, EUIPO in the European Union, and other agencies have their own internal databases, which will be updated by each agency after receiving notifications from WIPO. If a company has an ongoing review opinion response or objection process in the United States, it is best to proactively submit a filing to USPTO after the name change to avoid the examiner sending documents under the old name and missing the deadline. We often encounter such cross system synchronization pitfalls when dealing with overseas intellectual property affairs, and taking a step ahead can save a lot of trouble.

Transfer: Partial transfer and full transfer, with different rules

There are two types of assignments for international registration: full transfer and partial transfer. Full transfer refers to the holder transferring all categories and designated countries of the entire international registration to the assignee in one go. Partial transfer refers to the transfer of only a portion of a designated country or category. The rules for partial transfer are more complex: WIPO requires that the transfer cannot result in overlapping rights of "the same category, the same designated country" under the same international registration, otherwise it will be required to be split. In other words, partial transfer may require splitting the original international registration into two or more new international registration numbers.

The official fee for the transfer is 177 Swiss francs (per international registration). If there is a partial transfer and it needs to be split, the fee will be calculated separately based on the number of newly split registrations. After the transfer registration, the transferee becomes the new holder, but the obligations of the original holder (such as unpaid renewal fees) will not automatically transfer. In practice, we would suggest specifying in the transfer agreement: who will be responsible for the basic registration validity issues before the transfer takes effect, who will handle the pending objection or rejection procedures, and whether the transferee needs to appoint a new agent. If these terms are not clearly written, it will be difficult to remedy any problems that may arise in the future.

Deadline: The rejection deadline, response deadline, and renewal deadline are independent of each other

After the designated submission in the later stage, the review period of each designated bureau is not exactly the same. According to Article 5 of the Madrid Protocol, contracting parties may declare a rejection period of 12 months or 18 months (subject to additional notice). Major markets such as the United States, European Union, Japan, and South Korea typically adopt an 18 month timeframe. If the designated agency issues a Provisional Reject within the deadline, the response period shall be determined by the local laws of each agency. For example, USPTO usually gives 3 months, which can be extended but requires payment; The objection response period for EUIPO is generally 2 months, and an extension of 2 months can be applied for.

In terms of renewal, the validity period of international registration is 10 years, starting from the date of international registration. Renewal can be submitted within 6 months before expiration, and there is also a 6-month grace period, but an additional fee (currently 50 Swiss francs) needs to be paid during the grace period. Many companies confuse "international registration renewal" with "designated country local renewal": under the Madrid system, as long as the international registration is renewed, the protection of the designated country is generally renewed simultaneously, but some offices such as the United States require additional evidence or statements of use, which is omitted and may be revoked if renewed. This should be separately highlighted when planning the trademark maintenance calendar for 2026.

Common Misconception: Later designation is not as simple as "adding a name"

The first misconception is that later assignments can be added at any time without time pressure. In fact, if the original international registration has entered the renewal period or has been struck down by the center, the later designation may be directly denied registration by WIPO. The second misconception is to overlook the "scope consistency" of goods and services. The product and service descriptions of newly designated countries in the later stage must fall within the scope of the original international registration and cannot exceed it. The excess part will be rejected by the designated bureau, and there is very little room for modification after rejection. The third misconception is that the transferee automatically inherits all designated countries after the transfer. If the designated country list is not clearly listed during the transfer, some authorities may require additional proof. The fourth misconception is forgetting to update agent information. If the change of agent for international registration is not made, the communication between WIPO and the designated office will still be sent to the old agent, and there is a high risk of missing the response deadline.

If a company is undergoing local application or objection procedures in both the United States and the European Union, it is recommended to manage the schedule specified in Madrid and the schedule of local procedures on a single sheet. When it comes to multi country layouts, you can refer to the intellectual property legal service pages we have compiled for the United States and the European Union to understand the connection points between local procedures and Madrid procedures. For non Madrid mainstream designated areas such as Southeast Asia, the Middle East, and Latin America, intellectual property legal services from other countries can be viewed. The overall layout strategy can start with the overseas intellectual property sector and then refine it by country.

When processing in 2026, it is recommended to do these three things first

Firstly, retrieve the current status report of the international registration to confirm that there are no pending rejections, objections, or center strike risks. Secondly, verify whether the renewal date and 5-year dependency period of the basic trademark have expired. Thirdly, compare the goods and services involved in the later designation with the designated countries to avoid rejection due to inconsistent scope. After completing these three steps, submitting the later specifications will significantly improve the pass rate. The advantage of the Madrid system is centralized management, but its risks are also concentrated in "pulling one to trigger the whole body" - the foundation is unstable, and adding more countries later will be in vain.

The foreign-related intellectual property team of Guangdong Zhiming Law Firm has been handling trademark, patent, and copyright business in the United States, European Union, and Madrid system for a long time. If you need assistance in verifying the international registration status or planning for later designation, you can also consult togetherIntellectual property legal services in other countries, or call the hotline at 0755-25986969 for consultation.

Disclaimer: The content of this article is based on publicly available regulations and official fee information up to 2026, for general reference only, and does not constitute legal advice on any specific case. The fee standards, review deadlines, and procedural requirements of the contracting parties to the Madrid system may be adjusted at any time. Before specific operations, please refer to the latest announcements of WIPO and designated offices, and it is recommended to consult professional lawyers based on individual cases.