Lawyer Shen Jinlong explained the consequences and remedies for the delayed change of Madrid trademark designation in the later stage, including the fees and time limits for the designation

The conclusion is that later designation is not just about "registering". The Madrid trademark subsequent designation is still subject to an 18 month (extendable to 24 months) examination period in 2026. If the change or transfer registration is not processed in a timely manner after the designation, the new country may directly reject it as "subject mismatch". The remedial window is usually only 3 months, and if overdue, a recovery procedure must be taken, with fees starting from 2000 yuan. Lawyer Shen Jinlong reminds that if the Madrid trademark change and transfer are not timely, it may result in the suspension of rights or even being preemptively registered.

What is post registration specification and why is it more prone to problems than basic registration?

Many customers may think that "later designation" is similar to a new application when they hear it for the first time. In fact, it extends protection to new member countries through the International Bureau of the World Intellectual Property Organization (WIPO) on the basis of registered Madrid trademarks. In terms of process, after receiving the later designation, WIPO will forward it to the target country's trademark office, such as the United States Patent and Trademark Office (USPTO) or the European Union Intellectual Property Office (EUIPO). The problem is that the later designation does not generate a new international registration number, it is attached to the original international registration. If the registered name and address of the original registrant do not match the later designated application, the target country examiner will issue a temporary rejection. In practice, nearly 30% of the Madrid related consultations we received were due to cases where the later designation was rejected due to unsynchronized name changes. This is not the examiner making things difficult, it is the rule itself requiring the same subject.

How will USPTO and EUIPO handle the late registration of changes?

The basis for USPTO's review of Madrid's later designation is the 15 USC § 1141 series of provisions. If the name of the registrant has been changed but not registered with WIPO during the later designation, USPTO will issue an Office Action requesting clarification of the ownership of rights. The response period is usually 3 months, and an extension can be applied for, but official fees will be paid for each extension, and the maximum extension is 6 months. EUIPO is slightly different, as it focuses more on whether the later designation conflicts with the prior EU trademark, but inconsistent subject information can also trigger examination opinions. We generally suggest that before submitting the post designation, the Madrid trademark transfer should be registered with the WIPO International Bureau, and a copy of the updated international register should be obtained before proceeding with the post designation. This can save one round of response. Many customers, upon first encounter, tend to think that 'we will specify later and make changes gradually', resulting in two things getting stuck and doubling the time cost.

Cost and Deadline: How much does the official fee charge, and where are the legal fees spent?

WIPO will charge three designated fees in the later stage: a basic fee of 300 Swiss francs (approximately 2400 RMB), a supplementary fee of 100 Swiss francs per designated country, and an additional fee depending on the number of product categories. The fee for changing the registrar is lower, with WIPO charging 177 Swiss francs. But the real place to spend money is to remedy it within the time limit. If the later designation has been rejected by USPO or EUIPO and the response period has expired, additional official and legal fees will be charged to restore the process, and the overall cost may increase from 5000 yuan to over 15000 yuan. When dealing with trademark changes and transfers in Madrid, the lawyer team of Shen Jinlong will first create a schedule: WIPO registration usually takes 2-4 weeks, target country examination takes 12-18 months, and there is at least a 30 day buffer between changes and subsequent designation. This buffer is not a fixed rule, but without it, the probability of problems significantly increases.

Can we just transfer without making any changes?

No way. Change in Ownership and Assignment are two separate actions in the Madrid system. The change refers to a change in the registered person's name or address, such as a company name change or relocation; The transfer is aimed at a change of ownership, such as selling a trademark to another company. Both require a registration request to be submitted to the WIPO International Bureau and must be accompanied by supporting documents. If only the transfer is made without any changes, or vice versa, the records on the international registry and the subject information required by the target country will not match when specified later. We have seen clients change their company from 'Shenzhen XXX Technology Co., Ltd.' to 'Shenzhen XXX Technology Group Co., Ltd.', only making changes in domestic industry and commerce, forgetting to notify WIPO. One year later, they made a later designation to the United States, but USPTO directly rejected it with 'the registrant name does not match the applicant'. It took 4 months to remedy. This type of issue is very frequent in the daily consultation of intellectual property legal services in the United States and the European Union.

What are the remedies and which one is the most convenient?

There are three situations. The first option is to handle the changes directly before submitting the later specified changes, which is the cleanest path. The second option, if the later designation has been submitted but the target country has not yet issued a rejection, is to immediately make up for the changes and submit a correction explanation to the target country's trademark office. Most examiners will accept it. The third option is to receive a rejection notice: submit the change registration certificate within the response period and explain the reason for the delay. If the response period has passed, the only options are Restoration or Petition to Revise. The official fee for USPTO's recovery request is currently around $250, and the recovery process for EUIPO is more complex, requiring proof that 'despite reasonable care, the response was not made on time'. We usually advise customers to intervene in the second scenario and not delay until the third scenario. The core of remedy is not money, but the chain of evidence: proof of change, transfer agreement, notarized certification documents, any missing ones may be required to be corrected.

Can I change and transfer a Madrid trademark online by myself?

WIPO's online system does allow registrants to submit changes or transfer registrations on their own. But the downside of self operation is that if the goods and services involve categories that are not included in the Madrid system, additional conversions are required; The format of the signature documents of the transferor and the transferee varies among member states. For example, the United States requires both parties to sign the transfer agreement, while some EU countries accept electronic signatures. Once the format is incorrect, WIPO will issue an Irregularity Notice, with a response period of generally 3 months. We have dealt with the situation where the customer submitted it themselves and was returned twice by WIPO, causing a delay of 5 months and almost missing the designated window to Japan later. So if it involves two or more countries, or if the company has a history of changes, it is recommended to entrust it to a professional team. The foreign-related intellectual property team of Guangdong Zhiming Law Firm has long-term practical experience in overseas intellectual property layout, and Lawyer Shen Jinlong himself often handles such cross procedural coordination.

What new changes need to be noted in 2026?

WIPO updated the Madrid System Operating Guidelines by the end of 2025, with more detailed requirements for the description of designated goods in the future. Previously, the term 'computer software' could be used broadly, but now USPO and EUIPO may require it to be refined down to specific functionalities. This means that before the later designation, if the basic registered product description is too general, it may be required to be modified together when changing or transferring. The modification also involves basic registration, which triggers the whole body. Our suggestion is to check whether the product description of the basic registration still matches the current business before making the later designation. If it does not match, adjust it together during the opportunity of change or transfer. This is more convenient than making separate changes later on. More cross national procedural coordination can be referred toIntellectual property business in other countriesPlease provide an explanation or contact us directlyAttorney Shen Jinlong's Practice IntroductionThe team will undergo a rights check.

Lawyer Shen Jinlong, from Guangdong Zhiming Law Firm's foreign-related intellectual property team, specializes in Madrid trademark change and transfer, post designation, and cross-border rights maintenance. Hotline: 0755-25986969.

Disclaimer: The content of this article is based on publicly available regulations and practical experience, and does not constitute legal opinions on specific cases. The time limit and official fees for trademark procedures may be adjusted, please refer to the latest announcements from WIPO and the target country's trademark office. If specific cases need to be handled, it is recommended to entrust a professional lawyer to evaluate.