Madrid Designation After Cancellation of the Basic Mark

Under the Madrid Protocol, the international registration depends on the basic mark for five years. If the basic mark is cancelled, the international registration is cancelled, and the designations, including the Philippine designation, fall with it unless the holder transforms the international registration into national applications. The Philippine designation cannot simply be maintained by arguing that the Philippine examiner already granted protection. The holder should use the transformation mechanism under Article 9quinquies: within three months from the cancellation of the international registration, it may request that the Philippine designation be transformed into a Philippine national application. The transformed application is treated as filed on the date of the international registration and retains any priority claimed, but it must comply with Philippine national requirements and fees. The abandoned 2021 national application is a separate matter; transformation is not a revival of that application. Counsel should immediately confirm the cancellation date, docket the three-month deadline, and prepare a Philippine transformation application covering the goods actually used or intended to be used.

The unrecorded license does not by itself destroy the holder's rights, but it creates evidentiary and third-party problems. As between the holder and the distributor, the license may be valid, and authorized use by the distributor generally inures to the holder. But an unrecorded license is not effective against third parties, and it may complicate proof of who controlled the mark's use. For transformation, the key issues are the holder's ownership and the scope of the new national application, not the license. Still, counsel should record the license with IPOPHL promptly, or at least prepare a confirmatory license and evidence of authorization. Sales invoices, delivery receipts, product packaging, and advertising showing the distributor's use under the holder's control should be preserved. If the transformed application faces a declaration-of-actual-use requirement later, those records will help. The client should also be advised that recordal protects the license against later assignees and creditors and makes the relationship transparent to the Bureau.

Counsel should calendar the three-month transformation period from the cancellation date and treat it as jurisdictional. Documents will likely include a power of attorney, proof of the international registration and its cancellation, a translation of the cancellation decision, the Philippine transformation form, and the required fees. If priority is claimed, the priority document should be available. Counsel should also verify the goods and services to be carried over; transformation does not allow broadening beyond the international registration. The client should be advised in writing of the risks and the consequences of missing the deadline. On professional responsibility, counsel must docket the matter, avoid conflicts, keep the client informed, and not backdate or manufacture documents. If local counsel is retained, the engagement should define who files the transformation, who monitors publication and any opposition, and who handles the declaration of actual use. The abandoned national application should not be presented as a substitute for transformation.