The Trade Marks (International Registration) Order 1996

Transformation applications

19.—(1) The provisions of this article apply where—

(a) an international registration designating the United Kingdom is cancelled at the request of the Office of origin under Article 6(4) of the Madrid Protocol in respect of all or some of the goods or services listed in the registration;

(b) an application (a “transformation application”) is made to the registrar, within three months of the date on which the international registration was cancelled, for registration in the United Kingdom of a trade mark identical to that comprised in the international registration in respect of some or all of the goods or services in respect of which the international registration was cancelled; and

(c) the application is made by the person who was the holder of the international registration immediately before its cancellation.

(2) A transformation application shall be made on Form TM3 and shall state that it is made by way of transformation.

(3) A trade mark registered pursuant to a transformation application shall be treated as if it were registered as of the date of the international registration according to Article 3(4) of the Madrid Protocol or, where the request for extension to the United Kingdom was made subsequently to the international registration, on the date of recordal of that request according to Article 3ter of the Madrid Protocol, and that date shall be deemed for the purposes of the Act to be the date of registration.