A Guide to the International Trade Mark Filing System

How to Protect a Trade Mark in Multiple Countries as an International Registration via The Madrid Protocol

Trade mark rights are territorial. A trade mark registered in one country will not be automatically be protected in another. If you want to protect a mark in several  territories then you will need to register your mark in each territory, according to the applicable local laws.

Businesses that plan to trade internationally should always consider securing protection in each and every market where they operate or intend to operate.

The Madrid system offers a practical way to do this and is an international filing system for trade marks that allows applicants to seek protection of a trade mark in multiple territories under the ‘umbrella’ of a single application.

Here’s how the system works, its advantages and disadvantages, the process of obtaining an international registration and the requirements to file an application.

What is the Madrid system?

The Madrid System is managed by the World Intellectual Property Organisation (WIPO) based in Geneva, Switzerland. There are two pathways – the Madrid Agreement and the Madrid Protocol – but the Protocol is far more commonly used.

The purpose of the Madrid System is to simplify the process of obtaining trade mark protection in multiple jurisdictions.

Instead of filing a separate trade mark applications in each territory of interest, an applicant can file a single ‘international application’ through their national or regional trade mark office (the ‘Office of Origin’) and designate as many countries/territories as it needs for trade mark protection.

The applicant can only select those territories that are party to the Madrid Protocol (otherwise known as ‘member states’). Even so, the vast majority of major commercial markets are signatories to the Madrid Protocol.

How it works

An international application must be based on an existing national or regional application or registration in a member state territory. This is called the ‘basic mark’, which then underpins the international trade mark application filed subsequently.

To qualify, an applicant must be either domiciled or a national of the member state where the basic mark exists, or otherwise, have a real and effective industrial or commercial establishment in that member state.

An international application must be filed through the ‘Office of Origin’ which is the same regional office that holds the national ‘basic’ mark (application or registration).

A brand owner cannot file an international trade mark application without first establishing a basic mark. Once the right has established, the international trade mark application must be for the same mark and under the same proprietor name. The goods and/or services covered by the international application cannot exceed the scope of the goods and/or services covered by the basic mark.

Once an international application is filed, the Office of Origin sends the application WIPO, where it is examined for general formalities.

If it meets all necessary formality requirements, WIPO will record the mark in the International Register and publish it in the WIPO Gazette of International Marks.

A registration certificate is then produced but this can be often be misleading because the mark is not at that stage officially ‘registered’ in any of the territories of interest.

From there, details of the application are sent to each of the countries or regions (the member states) which have been nominated by the applicant.

On receipt of these details, each national member state office will have a period of 18 months to examine the application according to its own local laws, following which it must accept or refuse the application.

If approved (and subject to safely coming through an opposition period where the local law prescribes it) protection of the trade mark is granted in the territory.

This protection is equivalent to a national trade mark registration. It is a different route to the same result.

Coverage

The Madrid System covers over 110 members, representing more than 125 countries.

This includes major markets like the UK, USA, Canada, China, India, Brazil, Japan and Australia.

It also covers the following regional organisations which are all treated as a single ‘designation’:

• Benelux (Belgium, Netherlands, Luxembourg).
• European Union – covers all EU member states.
• OAPI (African Intellectual Property Organization) – covers 18 African countries.

Not all countries are members. If protection is needed in a non-member country, a separate national application is required.

What can be filed

An international application must be made for exactly the same trade mark as contained in the basic mark filed at the Office of Origin and for the same or limited goods and services as the basic mark.

It is possible to include multiple classes of goods and services, subject to the payment of national fees. Some territories require more specific descriptions than others and so the specifications may need adjusting for certain designations. That is commonly addressed later following issue of the national examination reports, when such objections might be raised.

Advantages of the Madrid system

The Madrid System offers several benefits compared to filing directly in each country:

1. Cost Savings
   This is the biggest advantage; filing one international application is almost always cheaper than filing national applications separately in each territory because local law firm filing fees are avoided.
2. Administrative efficiency
   There is one registration number and one renewal date. Changes such as ownership transfers or name changes can be recorded centrally at WIPO and will take effect across all designated countries. The registration can be renewed every 10 years and is done centrally, meaning the renewal takes effect in all designated territories.
3. Flexibility
   Additional territories can be added later through a ‘subsequent designation’ process. This allows businesses to expand protection as they grow, all under the same registration.
4. Faster results
   Some member states process applications faster under the Madrid System due to set time limits for examination. This can sometimes mean a speedier route to registration.
5. Uniform process
   The same application form and procedure applies for all designations.

Disadvantages and risks

While useful, the Madrid System also has potential drawbacks:

1. Dependency on the basic mark
   For the first five years, the international registration depends entirely on the existence of the basic mark. If the basic mark is refused, withdrawn, cancelled or restricted during that period, the international registration will be limited or cancelled to the same extent in all designated countries. In the worst case scenario, if a basic application is successfully opposed or registration cancelled, the entire international registration (which it underpins) would fall away. In that scenario, there is a process to convert international protection to national protection under a process called ‘transformation’ but it is an expensive one.
2. Not truly ‘global’
   Protection is available only in those territories party to the Madrid Protocol. If a business wants to register a mark in a territory that does not fall under the system then a separate national filing would be necessary. In essence, ‘international’ does not strictly mean ‘international’.
3. Local examination risks
   Each national office applies its own law and practice at the examination stage. Some territories (e.g. the US) examine very strictly and it is usually necessary to engage a local law firm at that stage to handle any objections. Engaging law firms overseas increases the cost, and taking the US as one example, can raise the costs substantially. With that said, local US law firm costs are nonetheless avoided at the filing stage, so these costs are usually offset by some degree.
4. Specification restrictions
   Some territories require more precisely detailed specifications of goods and services. This often triggers objections leading to the necessary appointment of a local law firm. The US and Canada are prime examples.
5. Language and translation issues
   The application is filed in one of WIPO’s official languages (English, French, Spanish), but national offices will communicate in their own languages, potentially adding translation costs.
6. Lack of official certificates
   Many territories do not issue an official registration certificate once an international application has been granted locally and, instead,  will often rely on a simple notification to WIPO. This can create problems for brand owners that need to have official registration certificates on file for use when licensing their mark in such territories or when partnering with local distribution companies and retailers. In China, for example, many major online platforms will insist on seeing copies of official registration certificates before allowing a brand to sell. In such cases, certificates have to be ordered from the Chinese national office which adds complexity, cost and time.

The process – step-by-step

The process for filing under the Madrid System involves the following steps:

1. File the basic application or obtain a basic registration
   This is done in the applicant’s Office of Origin. In the UK, this is the UK Intellectual Property Office (UKIPO).
2. Prepare the international application
   The application must include:
   • Details of the applicant
   • The basic mark
   • The list of goods and services (matching the basic mark)
   • The designated countries or regions
   • Any claim to priority from the basic application.
3. File through the Office of Origin
   The Office of Origin checks the application and certifies it. In the UK, there is a handling fee for forwarding the application to WIPO. The requisite international fees for WIPO (in Swiss francs) are also paid at this time
4. Formal examination by WIPO
   WIPO examines for formal requirements. If irregularities are found, the applicant is given a chance to correct them.
5. International registration and publication
   If accepted, WIPO records the mark in the International Register and publishes it. A registration certificate is then produced.
6. Examination by designated offices
   Each national or regional office examines the application under its own laws. They have up to 12 or 18 months to refuse or accept the mark.
7. Grant of protection or refusal
   If no refusal is issued within the set time, protection is deemed granted. If a refusal is issued, it must be dealt with directly with that office, often through appointing a local attorney.

Official fees

The cost of an international application depends on:

• A basic fee (higher if the mark is in colour)
• Individual fees for each designated country or region
• A supplementary fee for each class above three (unless the country charges an individual fee instead).

The online WIPO fee calculator can estimate the cost before filing. The applicant also needs to allow for professional fees for handling the application and registration process. It is easy to get it wrong and mistakes can be costly, so always best left handled by a professional trade mark attorney.

Managing an international registration

Once registered, the international registration lasts for 10 years and can be renewed indefinitely. Changes such as ownership transfers, address changes or amendments to goods and services can be recorded centrally with WIPO and will take effect in all the territories covered by the registration.

Renewals must be filed and paid before the expiry date. Failure to renew will result in loss of protection in all territories.

When to use the Madrid system

The Madrid System works best (economically and logistically) when:

• Protection is needed in multiple territories or regions (at least more than two)
• The applicant is confident the basic mark will not face refusal or cancellation in the first five years.
• Administrative simplicity and cost savings are a priority.
• The business may expand protection over time.

It may be less suitable if:

• Protection is only needed in one or two territories.
• The basic mark is at risk of refusal, for example, if reliance is on a UK application under opposition.

Why you should consider it

The Madrid System is a valuable tool for businesses seeking trade mark protection in multiple jurisdictions. It streamlines the process, reduces administrative burdens and can save money.

However, it is not without risks. The dependency on the basic mark and the need to meet varying national requirements mean that careful budgeting for future costs is essential.

For many applicants, the advantages outweigh the disadvantages, especially when expansion into multiple markets is planned. Professional advice is essential to ensure that an international application is prepared correctly and that the chosen strategy suits the business’s needs.

If you would like SH&P to assist you in handling an international trade mark application then contact us today.