‘Replacement’ is the procedure whereby a designation of an international registration automatically substitutes an existing national trade mark registration in the same territory. The earlier priority and/or filing dates of the national right that is being replaced will be preserved. This means that the national registration can eventually be allowed to lapse without any negative consequences for the owner.

There are certain conditions which need to be met for replacement to take place – you or your business must own a national trade mark registration, and a designation from an international registration which are both:

• Protected in the same territory;
• For the same trade mark and the same goods/services; and
• Held by the same owner

The international designation must also post-date the existing national registration.

One of the key advantages of replacement in the UK is that in letting the existing national registration lapse, savings can be made on renewal fees going forward. This is because renewing a UK designation of an international registration that already covers other designated territories is generally more cost-effective than renewing a national UK registration at the UK Intellectual Property Office. Additionally, it streamlines trade mark portfolios, allowing the owner to manage its portfolio centrally at WIPO, the cost of any future recordals e.g. assignment, or change of owner’s details should be reduced.

The UKIPO has recently implemented a key update regarding replacement which came into effect on 21 November 2024. Previously, replacement was only possible when the international registration covered all goods and services of the UK registration. However, ‘partial replacement’ is now available. This means that it is possible to replace a UK trade mark registration with a designation that covers fewer goods/services. Goods/services not covered by the international registration can be maintained through the existing UK registration.

Replacement may be of particular interest to owners who were granted UK comparable registrations from existing EU designations of international registrations post-Brexit in order to bring the UK protection back under the international registration. Whilst replacement of a UK national registration is automatic, recordal is advised for the information of third parties and is a simple process.

For more information on the ‘replacement’ procedure or for any other questions on intellectual property, please contact one of our attorneys.