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Introduction
In a globalised marketplace, protecting your brand internationally is more crucial than ever. The Madrid System—administered by the World Intellectual Property Organisation (WIPO)—offers a streamlined process for registering trademarks in multiple countries using a single application. Whether you’re a startup looking to expand or an established company safeguarding your brand, this system can save time, money, and administrative hassle.
What Is the Madrid System?
The Madrid System for the International Registration of Marks is a centralised trademark registration mechanism that allows a trademark owner to seek protection in up to 130+ member countries through a single application filed with WIPO, based in Geneva, Switzerland.
This system is governed by two international treaties:
- The Madrid Agreement (1891)
- The Madrid Protocol (1989)
Most countries today operate under the Madrid Protocol.
Advantages of the Madrid System
- Single application in one language (English, French, or Spanish)
- One set of fees in one currency (Swiss francs)
- Centralised management of renewals, changes of name/address, or assignments
- Cost-effective compared to filing separate applications in each country
Eligibility to Use the Madrid System
To use the Madrid System, you must have a connection (entitlement) with a Madrid member country. This can be:
- Nationality
- Domicile
- Real and effective industrial or commercial establishment
You must also have a basic application or registration in your home country, which becomes the foundation for your international trademark.
The Trademarkroom can walk you through this step by step. If you are based in the UK and hold a UK trade mark application or registration that is identical to the application you wish to file, you are good to go!
You can file in one or more of the signatory countries. Please get in touch with your wish list and we can confirm if those countries are covered.
Step-by-Step Process
1. File a National/Regional Application
Before applying internationally, you need a basic mark—a national or regional trademark application or registration in your “home” country (known as the Office of origin), such as the UK.
2. Submit the International Application
File an international application through your Office of origin, which will certify and forward it to WIPO. The application must match the goods/services and trademark details of your basic mark. The Trademarkroom will do this for you, and keep you updated throughout the process.
3. WIPO Formal Examination
WIPO conducts a formal examination to ensure the application complies with Madrid Protocol requirements. If everything is in order, WIPO:
- Records the mark in the International Register
- Publishes it in the WIPO Gazette of International Marks
- Issues a certificate of registration
This certificate doesn’t mean the process is over, as the application now needs to be considered by the national offices of the territories you have chosen.
4. Substantive Examination by Designated Countries
Each country (called a designated Contracting Party) examines the application under its national trademark laws. They have up to 12 or 18 months to:
- Grant protection
- Issue a provisional refusal (if there’s a problem)
5. Respond to Provisional Refusals
If a country issues a refusal, the trademark owner must:
- Respond directly to that country’s IP office
- Hire a local trademark attorney, if required
These refusals can be in relation to a number of different issues, including issues with the mark itself, issues with the classes or earlier registered marks that conflict with your application. The Trademarkroom will detail these issues to you and discuss how we can overcome them.
6. Maintain and Renew the Registration
- The international registration lasts 10 years and is renewable every 10 years.
- Any changes (e.g., ownership, name, address) can be recorded centrally through WIPO.
Fees
Fees vary depending on:
- Number of countries selected
- Whether the trademark is in colour or black-and-white
- Number of classes of goods/services
The Trademarkroom can provide you with a detailed quote for the countries you wish to file in.
The Madrid System is an efficient gateway to international trademark protection, offering a user-friendly and cost-effective solution. The Trademarkroom team are experts in ensuring that your trade marks are protected, and therefore can walk you through this process.
Get in touch with the team today if you wish to go ahead and file through the Madrid system.
