Recently, while preparing international trademark registration for my small brand, I researched the Madrid Protocol system and found it significantly more efficient than filing separate applications in each country. Simply put, the Madrid Protocol is an international treaty that allows you to register trademarks in multiple countries simultaneously through a single international trademark application, with over 100 member countries currently participating.
What is the Madrid Protocol
The Madrid Protocol, formally known as the “Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks,” was signed in Madrid, Spain in 1891, which explains the origin of its name and the associated [Madrid trademark registration fees]. Later supplemented by the Madrid Agreement, these two instruments together form the current Madrid System. Administered centrally by the International Bureau of the World Intellectual Property Organization (WIPO), you only need to submit one application through your national trademark office, designate the countries where you want protection, and obtain trademark protection in those countries.
Basic Application Requirements
To use the Madrid System, you must first have a basic application or basic registration in your home country. For example, if you are a Spanish business or have a genuine commercial establishment in Spain, you can file an international application through the Spanish Patent and Trademark Office (OEPM). The basic trademark and international application must be identical, including the trademark design, applicant information, and goods/services classes.
Fee Structure and Calculation
The fee structure is actually quite transparent, consisting of three main components:
| Fee Type | Amount Range | Description |
|---|
| Basic Fee | From 653 Swiss Francs | 653 for black and white marks, 903 for color marks |
| Supplementary Fee | 100 Swiss Francs per class | Charged for each class beyond the first 3 |
| Individual Fee | Varies by country | Certain countries charge independent fees |
Note: Countries like the United States and Japan charge additional individual fees, which may be higher than the basic fee when considering Madrid trademark member countries. Therefore, it’s best to calculate the total cost before designating countries, as sometimes filing directly may be more cost-effective.
Examination Timeline and Refusal Handling
After submitting your application, WIPO’s International Bureau conducts a formal examination and typically issues an International Registration Certificate within 3 to 4 months. However, this doesn’t mean your trademark is successfully registered yet - this is just the beginning. The substantive examination occurs in each designated country, with each country having a 12 to 18-month examination period.
If a country’s trademark office finds your trademark doesn’t comply with their laws, they will issue a provisional refusal notice. You must respond within the specified time or provide supplementary materials, otherwise the trademark will be officially refused in that country. Fortunately, other countries remain unaffected - one country’s refusal doesn’t cause a complete failure.
Renewal and Ongoing Management
Madrid international registrations have a 10-year validity period and can be renewed. Renewal is also processed centrally through WIPO’s International Bureau, renewing all designated countries at once, which is far more convenient than renewing in each country separately. Note that within the first 5 years of international registration, if your basic application or registration is refused, cancelled, or abandoned in your home country, the international registration will also lapse - this is called the central attack principle. Therefore, it’s essential to maintain your basic trademark in your home country during the first 5 years.
Overall, the Madrid System is suitable for situations requiring trademark registration in multiple countries, saving considerable time and costs. However, if you only need registration in one or two countries, or if your target countries are not Madrid System members, filing directly in those countries is more appropriate. Feel free to share any practical experience you may have.
