Madrid Protocol lets you file single trademark application through your home country to seek protection in 130+ member countries. Costs $653-903 base fee plus per-country fees. Cheaper and faster than filing separately in each country.
What is Madrid Protocol
International trademark system administered by WIPO (World Intellectual Property Organization). File one application in one language. Pay one set of fees initially. Designate multiple countries for protection. Manage renewals centrally.
How Madrid System Works
Must have "basic mark" in home country (filed or registered). File international application through home trademark office. WIPO reviews application (formalities only). WIPO forwards to designated countries. Each country examines under their national law. Approved marks registered in designated countries.
Basic Mark Requirement
Need existing trademark in home country office: Registered mark (strongest basis), OR Pending application (riskier - if rejected, international application fails), OR Registration pending (allowed in some countries). International mark depends on basic mark for first 5 years.
Central Attack Risk: If basic mark cancelled/limited in first 5 years, international registration automatically affected in all countries. After 5 years, international registration becomes independent. Strategy: Wait for home registration before filing international.
Madrid Protocol Countries
Major members include: US, EU (covers all 27 EU countries), UK, China, Japan, South Korea, Australia, Canada, Mexico, Brazil, India, Russia, Switzerland, Singapore. Notable non-members: Most of South America (except Brazil, Colombia), Some African countries, Some Middle Eastern countries.
EU as Single Designation
Designating EU covers all 27 member states. Single fee for entire EU. Rejection in one EU country doesn't affect others. Most cost-effective for European protection. Brexit: UK now separate designation from EU.
Application Process
Step 1: File/register trademark in home country (USPTO, EUIPO, UKIPO, etc). Step 2: File international application through home office. Step 3: Home office certifies and forwards to WIPO ($90 transmittal fee US). Step 4: WIPO examines formalities (4-6 weeks). Step 5: WIPO publishes in International Gazette. Step 6: Designated countries examine (12-18 months typical). Step 7: Countries grant or refuse protection.
Timeline by Stage
Transmittal to WIPO: 2-4 weeks. WIPO formal examination: 4-6 weeks. Forwarding to countries: 1-2 weeks. Country examinations: 12-18 months (varies by country). Total to first grants: 14-24 months typically.
Costs and Fees
WIPO fees structure complex but predictable.
Base WIPO Fees
Basic fee: 653 Swiss Francs (~$730 USD). Supplementary fee per designated country: Individual countries: 100 CHF each (~$112). EU designation: 15 CHF (~$17). Color mark supplement: 60 CHF. Total base for 5 individual countries + EU: ~$1,400.
Country-Specific Fees
Some countries charge individual fees instead of standard supplementary fee: Japan: 800 CHF (~$900). US: 267 CHF per class (~$300). UK: 200 CHF (~$225). China: 120 CHF (~$135). Most use standard 100 CHF supplementary fee.
Language and Translation
Application filed in: English, French, or Spanish (choose one). WIPO correspondence in chosen language. Countries may require translation of goods/services description. Translation costs: $50-150 per country typically.
Examination by Designated Countries
Each country applies its own trademark law. Can refuse registration if: Conflicts with prior national mark. Descriptive in that country's language. Violates that country's public policy. Generic term locally. Each country issues separate decision.
Provisional Refusals
Countries have 12-18 months to refuse (varies by country). Must respond to refusals in each country separately. Local attorney usually needed for refusal responses. Costs $500-2,000 per refusal response. Partial refusals possible (some goods/services refused, others accepted).
Managing International Registration
Centralized through WIPO: Add countries later (subsequent designations). Record ownership changes once. Renew all countries simultaneously. Update goods/services. Request territorial limitations.
Renewal
10-year term (same as most national systems). Renew centrally through WIPO. Pay single renewal fee for all countries. Costs: 653 CHF base + supplementary fees per country. Can drop countries at renewal to save costs.
Advantages of Madrid Protocol
Cost savings: 60-75% cheaper than separate filings. Single application and language. Centralized management. One renewal for all countries. Add countries later without new basic application. Change ownership once, affects all countries. Expandability as business grows.
Business Benefits
Protect brand before international expansion. Lock in trademark rights in target markets. Prevent competitors from registering. Easier to enforce across borders. Simplified portfolio management. Lower legal costs.
Madrid Protocol best for: Businesses expanding to multiple countries. E-commerce companies selling internationally. Brands with plans for global presence. Startups seeking international protection early. Franchisors protecting in franchise territories.
Disadvantages and Limitations
Central attack risk (first 5 years). Depends on home country mark status. Not all countries participate. Some countries faster to file nationally. Refusals still require local attorneys. No unified opposition period (varies by country).
Madrid vs National Filings
Use Madrid Protocol when: Need protection in 3+ countries. Countries are Madrid members. Have or will have national/regional registration. Want simplified management. Budget-conscious. Use national filings when: Only need 1-2 countries. Country not in Madrid System. Need faster protection in specific country. Central attack risk unacceptable.
US-Specific Madrid Filing
File through USPTO as office of origin. Must have US trademark (filed or registered). USPTO transmittal fee: $90. WIPO fees paid to USPTO in USD. Can designate foreign countries only (not US itself). USPTO provides online filing system.
US Basis Requirements
Need US trademark application or registration. Must match international application exactly: Same owner. Same mark (identical). Same goods/services (can file for subset). International app limited to scope of US mark.
EU/UK-Specific Madrid Filing
File through EUIPO (EU marks) or UKIPO (UK marks). Can designate countries outside EU/UK. Brexit impact: EU and UK now separate designations. Need both if want coverage in both territories. Existing EU marks (pre-Brexit) remain valid in both.
Common Mistakes
Filing before basic mark is strong (risk of central attack). Designating too few countries (expensive to add later). Not budgeting for refusal responses. Assuming automatic approval. Not using local counsel for refusals. Forgetting renewal deadlines. Not monitoring for infringement in designated countries.
Strategic Considerations
When to file: After basic mark registered (safer). Before international launch. When planning expansion. To block competitors in key markets. Where to designate: Countries where you'll operate. Countries with key competitors. Major markets in your industry. Countries with known counterfeit issues.
Phased Approach
Year 1: Designate immediate markets (3-5 countries). Year 2-3: Add expansion markets via subsequent designations. Year 5+: Add defensive markets (prevent counterfeits). Ongoing: Monitor and enforce in designated countries.
Trademark Lens helps verify your brand name is available across multiple countries before filing expensive international trademark application through Madrid Protocol.