Transformation to a national trademark registration

If the international trademark registration ceases to applyin whole or in part as a result of changes to the basic application or registration, it is possible to turn it into a national application in each of the designated countries.

What is transformation?

Transformation (formerly called conversion) is a rule on priority that follows from section 75 of the Trade Marks Act, cf. Madrid Protocol art. 9 quinquies. Transformation is intended to be a safety valve for holders of international registrations. 

Through transformation the priority that the international trademark registration had in Norway can be retained. 

You must submit a national trademark application and pay the usual application fee. There is a separate field for applying for transformation in our application form in Altinn. 

Conditions for transformation

  • The international registration must be fully or partially terminated with WIPO. You must apply for transformation within 3 months of the termination of the international registration in WIPO. The central date is the "date of recordal" which appears in the correspondence about the termination from WIPO. 
  • The holder must document that the deadline has been met. Please send us a copy of the notification from WIPO about the background (and date) that the international registration has ceased in whole or in part. 
  • The holder of the international registration and applicant in the national application must be the same. 
  • The marks must be identical. 
  • You must translate the list of goods in the international registration into Norwegian. The goods and services specified in the request for transformation to a national registration must be included in the list of goods and services in the Norwegian designation. If the international registration is partially terminated, only the terminated goods and services can be transformed. 
  • You must state which international registration it concerns and which priority is requested. This can be convention priority or priority from the date of the international registration (international registration date/subsequent designation date). 

The consequences of transformation to national registration

The application for transformation to a national registration is given the same application day as the international registration. This means that the transformed mark either receives the international registration date or the subsequent designation date as the application date. 

Apart from the rules on priority, the requirement for transformation to a national registration has the status of a national trademark application. 

The trademark in the request for transformation to a national registration is processed at the same stage as the Norwegian designation of the international registration was at when it ceased: 

The mark in the national trademark application is also directly registered in Norway without substantive proceedings if the conditions are met. If the oppositionperiod for the international registration has expired, there is no opposition period either. 

The proceedings will continue as a national application at the same stage. This implies that there may be obstacles to registration. 

Do you have questions?

Our customer center will be happy to help you.