Madrid international trademark applications grew 14.4 percent in 2021, the fastest growth since 2002. Chinese applicants ranked the third with 5272 pieces of applications. Although the Madrid system is complained by some applicants due to its drawbacks and inconveniences, you may not know that the Madrid system already provides trademark owners with a variety of convenient online tools to manage international trademarks, also supports and assists them throughout the whole business circle of trademarks. 

The Madrid system introduced new online tools in April 2022, that is, change of ownership of trademark (i.e. assignment and transfer of trademark right). Up to now, the online filing tool of the Madrid system has covered 8 application categories, including subsequent designation, change of the registrant’s name, address and legal nature, change of the agent's name and address, agent designation, renewal, limitation, renunciation of goods or services, and change of ownerships of trademarks. Trademark owners can easily complete online submission and pay official fees by following the prescribed steps. 

Regarding the 8 online applications mentioned above, there are some tips although the operation is quite simple and convenient, here to share with you. 

SUBSEQUENT DESIGNATION

1. Precondition: a subsequent designation must be filed after the Madrid trademark has been registered at the international register and already got the international registration number.

2. Conditions where online tools are not available: with the situation that the applicant has special requirement, i.e. an applicant requesting a subsequent designation to take effect after the completion of a change of registration or renewal in respect to a Madrid trademark, then, MM4 application form must be used instead of online tools. 

3. Certificate or Notification: no separate or updated international registration certificate will be issued for the subsequent designation, only the notification for the subsequent designation. See the sample below: 

（Sample Source：the official website of WIPO）

3. Countries and conditions are not available for subsequent designation: the international trademarks registered before the dates below cannot proceed subsequent designations in the following countries. 

（Data source：the official website of WIPO）

CHANGE OF REGISTRANT’S NAME, ADDRESS AND LEGAL NATURE

1. Combine submission and pay only one official fee: several international trademarks of the same registrant, or several changes (i.e. name, address, contacts, legal nature)，may be combined in a single application for a single official fee, the precondition is that the name of the registrant registered in the international register for each trademark is exactly the same. 

2. Precondition: Users of online tool must be the recorded holder of international trademarks or the recorded representatives of the international trademarks registered on the international register. The new agent is advised to apply for designated agent firstly and use online tools to apply for the change after the agent information is updated. 

3. There is no need to submit any supporting documents when the submission via the online tools, also, it is not subject to if the basic trademark has been changed or if the change has been completed. 

RENEWAL

1. Available time for submission: The renewal can be proceeded via online tool within 3 (three) months prior to the expiration of the term, or within 6 (six) months after the expiration of the term. However, the extra fee will be incurred if the renewal filed within 6 (six) months after the expiration date. 

2. Renewal-in-part: 

Renewal can be proceeded in partially selected effective contracting parties, non-selected contracting parties will not renew. However, there is no partial selection of classes of goods or service. If renewal of partial classes of goods or service is needed, you need to file the application for limitation or renunciation at the proper time prior to the renewal, and need to complete corresponding registration before the renewal. The renewal fee will be calculated on the basis of the numbers of classes retained and the retained goods and services will be shown on the international renewal certificate. 

LIMITATION AND RENUNCIATION OF GOODS OR SERVICES

1. Limitation, Renunciation and Cancellation are three ways to modify, shorten and delete the classes of goods and services. The difference among the three are as follows: the application for limitation may delete or limit items of goods or services in one or serval, even whole designated contracting parties, also may delete the classes. The application for limitation applies only to the contracting parties to which the applications relates and will not affect the main list of the goods and services registered in the international register. For example, one class has been limited in all designated contracting parties, which means that the class is not valid in all designated contracting parties, but this class can still be used for the subsequent designation and will be included in the calculation of the renewal fee. The application of cancellation is just the opposite. An application for cancellation will result in the direct and permanent removal from the international register of one or more goods or services, one or more classes, with effect for all designated contracting parties. The canceled class can no longer be used for the subsequent designation and will not be included in the calculation of renewal fees. If you want to get the protection again, the re-submission of the application for the registration is required. The renunciation means to renunciate the effect of all goods or service in some (but not all) of the designated contracting parties. If you want to renunciate effects on all classes at all designated contracting parties, the application for cancellation is required. The renounced contracting party through the application for cancellation, could obtain the protection again through the application for the subsequent designation. There are no official fees to apply for renunciation and cancellation, however, official fee is required by the application for limitation. 

CHANGE OF OWNERSHIP OF TRADEMARKS

1. The scope of change: the grounds for the change of trademark ownership can be transferring of trademark, court judgement, inheritance, bankruptcy, enterprise merger, all of these can be called ‘change of ownership’ with no difference. 

2. Qualification of assignee: a assignee shall meet the qualification requirements of the Madrid System, i.e. having a nationality, domicile (or headquarters) or a real and valid place of business in the Madrid member states. 

3. Combined Submission: Several international trademarks which refer to the same assignor and assignee and to all designated contracting parties, and all goods and services may be combined in a single application, however, the official fee will be charged according to the number of marks (numbers of registrations). 

4. There is no need to submit any supporting documents when the submission via the online tools, also, it is not subject to if the basic trademark has been changed or if the change has been completed

The 8 online applications mentioned above are indeed convenient, simple and fast, but unfortunately, all online tools currently do not support operation in Chinese, the operations need to be carried out in English, French or Spanish. The official fee (if any) should be paid online at the same time of submission, currently, the payment can only be made using the current account opened in the WIPO in advance, and also can pay through personal credit card. 

Beijing Janlea Intellectual Property Right has opened a current account with WIPO, which can meet the requirements of online payment of official fees. At present, the above business has been basically changed to online submission. Comparing with the previous ways of submission through the Chinese Intellectual Property Office, it saves the review time at the domestic phase, moreover, bring more convenience to the domestic applicants in terms of documents procedures.