The Madrid Protocol Explained

The Madrid Protocol is an international trademark registration system that lets you file one application through WIPO (World Intellectual Property Organization) to seek protection in over 130 member countries. Instead of filing separate applications in each country, you can designate multiple jurisdictions through a single centralized process, saving time and cost while maintaining unified management of your international portfolio.

What is the Madrid Protocol

The Madrid Protocol is an international treaty administered by WIPO that provides a streamlined system for filing and managing trademark applications across multiple countries. Established in 1989 and entering into force in 1996, the Protocol now has over 130 member countries representing major markets worldwide.

Key Characteristics

The Protocol works alongside national and regional trademark systems—it doesn't replace them but provides an alternative filing route that can be more efficient for multi-country protection.

How the Madrid System Works

The Madrid Protocol follows a multi-step process that begins with your home country trademark office and extends through WIPO to your designated countries.

The Five-Step Process

1. File or own a base application/registration: You must have an existing trademark application or registration in your home country (called the "Office of Origin")

2. File international application through your home office: Submit your international application via USPTO, EUIPO, or your national trademark office

3. WIPO examination and registration: WIPO reviews for formal compliance and issues an international registration with a unique number

4. Forwarding to designated countries: WIPO sends your application to each country you've designated for protection

5. National examination: Each designated country examines your mark under its own substantive laws and issues protection or refusal

What WIPO Does vs What National Offices Do

WIPO's role is administrative and procedural—they don't evaluate whether your mark is registrable. Each designated country makes its own substantive decision.

Requirements for Filing

To file a Madrid Protocol application, you must meet specific requirements related to your base mark, eligibility, and application details.

Base Mark Requirements

Applicant Eligibility

You qualify to file a Madrid Protocol application if you meet one of these criteria with respect to a member country:

• Nationality: You are a national of a Madrid Protocol member country
• Domicile: You are domiciled in a member country
• Establishment: You have a real and effective commercial or industrial establishment in a member country

For example, if you're a US business owner with a USPTO trademark, you can file through the USPTO regardless of your nationality. If you have an EUTM, you can file through EUIPO if you have an establishment or domicile in the EU.

Filing Procedure

Filing a Madrid Protocol application involves working with your Office of Origin and completing WIPO's required forms.

Step-by-Step Filing Process

1. Prepare your base mark information

   • Serial/registration number
   • Filing or registration date
   • Current status
   • List of goods/services covered

2. Choose designated countries

   • Select from 130+ member countries
   • Consider individual fee vs supplementary fee countries (affects cost)
   • Review each country's specific requirements

3. Complete WIPO Form MM2 or equivalent

   • Mark representation (identical to base mark)
   • Goods/services descriptions (use Nice Classification)
   • Designated countries list
   • Fee calculation

4. Submit through your Office of Origin

   • US applicants: File through USPTO using TEAS or paper form
   • EU applicants: File through EUIPO's online system
   • Other countries: Check your national office's procedures

5. Pay required fees

   • Fees paid to your Office of Origin, which forwards to WIPO
   • Includes basic fee, supplementary/individual fees, and office handling fee

6. WIPO issues international registration

   • Typically within 3-6 months
   • Certificate issued with international registration number and date
   • Date of international registration is your priority date in all designated countries

Where to File

Cost Structure and Fees

Madrid Protocol fees include multiple components: basic fees to WIPO, per-country designation fees, and optional class fees.

Fee Components Breakdown

Individual Fee vs Supplementary Fee Countries

Countries designate whether they charge individual fees (set by the country) or accept WIPO's standard supplementary fees.

Supplementary Fee Countries (pay standard WIPO fees per class):

• Most EU countries
• Many African countries
• Some Asian countries

Individual Fee Countries (pay country-specific fees):

• United States: $400-600 per class
• United Kingdom: ~£200 per class
• China: ~$350 per class
• Japan: ~$200 per class
• Australia: ~$150 per class

Cost Comparison Examples

Example 1: Three Countries (1 class)

• Base fee: 653 CHF
• Countries: France (supplementary), Germany (supplementary), Spain (supplementary)
• Supplementary fees: 3 × 0 CHF (first class included in base fee)
• USPTO transmittal: $100
• Total: ~$830

Example 2: Five Countries Mixed (1 class)

• Base fee: 653 CHF
• Countries: US ($500), UK (£200), China ($350), Japan ($200), France (supplementary)
• Individual fees: $500 + $280 + $350 + $200 = $1,330
• Supplementary fee: 0 CHF (France, first class)
• USPTO transmittal: $100
• Total: ~$2,160

Example 3: Ten Countries (3 classes)

• Base fee: 653 CHF
• Supplementary fee: 200 CHF (2 additional classes × 100 CHF)
• Countries: 6 supplementary countries + 4 individual fee countries (~$1,800 in individual fees)
• Office transmittal: $100
• Total: ~$2,880

Timeline and Process Duration

Understanding the Madrid Protocol timeline helps set realistic expectations for when you'll have protection in each designated country.

Timeline Breakdown

Refusal Period by Country

Each designated country has a specific timeframe during which it must issue a refusal (called a "provisional refusal"). If no refusal is issued within this period, protection is automatically granted.

If a country doesn't issue a refusal within its period, the mark is automatically protected—no further action needed.

Statement of Grant of Protection

Many countries (especially EU member states) proactively send a "Statement of Grant of Protection" to WIPO once they've examined and approved your mark. This confirms protection is granted. Other countries simply let the refusal period expire without issuing a statement—silence means protection is granted.

Central Attack and the 5-Year Dependency

The most significant risk in the Madrid Protocol system is central attack—the dependency of your international registration on your base mark for the first five years.

What is Central Attack?

Central attack refers to the risk that if your base trademark application or registration is refused, abandoned, canceled, or otherwise ceases to exist within five years of your international registration date, your entire international registration also falls.

Example Scenario:

1. You file a US trademark application in January 2024
2. You file a Madrid Protocol application based on that US application in March 2024, designating 20 countries
3. In October 2026, your US application receives a final refusal for likelihood of confusion
4. Your international registration, and all 20 country designations, are canceled because the base mark failed

Dependency Period

Transformation: Converting After Central Attack

If your base mark is canceled or ceases to have effect during the dependency period, you have the option to "transform" your international registrations into national applications in the designated countries.

Transformation Process:

1. File national applications in each affected country within 3 months of the international registration being canceled

2. Retain priority: The transformed national applications retain:

   • The original international registration date as priority date
   • The original goods/services designations

3. Pay national filing fees: Each country charges its standard national filing fees for the transformation

4. Continue prosecution: Each national application proceeds through that country's examination process as if it had been filed directly

Cost Consideration: Transformation can be expensive—you'll pay individual national filing fees and potentially need local attorneys in each jurisdiction. For 10-20 countries, this can cost $10,000-50,000+.

Why the 5-Year Rule Exists

The dependency exists to prevent circumventing a country's examination standards. Without it, applicants could file weak marks in countries with lenient examination (to get a base mark easily) and then use Madrid to force those marks into countries with stricter standards.

After five years, your mark has presumably been used and established in commerce, so it's considered legitimate and can stand independently.

Managing Your International Registration

One major advantage of the Madrid Protocol is centralized management—many administrative tasks can be handled through WIPO rather than dealing with each country individually.

Subsequent Designations

You can add new countries to your international registration after it's granted—called "subsequent designations."

Strategic Use: Designate core markets initially, then add expansion markets as your business grows or budget allows.

Renewals: One Renewal for All Countries

International registrations are renewed every 10 years through WIPO, covering all designated countries with a single renewal.

Cost Savings: Renewing 20 countries through Madrid costs significantly less than renewing 20 separate national registrations.

Recording Changes Centrally

Changes in ownership, name, or address can be recorded with WIPO and automatically update across all designated countries.

Each recordation has a fee (~200-300 CHF) but is far cheaper than recording changes separately in each country.

Advantages of the Madrid Protocol

The Madrid Protocol offers substantial benefits, especially for businesses seeking protection in multiple countries.

Key Advantages

1. Single Application: File once instead of 10+ separate national applications

2. Cost Savings: Significantly cheaper for 4+ countries

   • Example: Protecting in 15 countries via Madrid: ~$5,000-8,000
   • Example: Protecting in 15 countries via direct filing: ~$15,000-30,000+

3. One Language: File in English, French, or Spanish—no need for translations into 10+ languages

4. Centralized Management:

   • One renewal every 10 years covers all countries
   • Record ownership changes once
   • Update address once
   • Manage entire portfolio through WIPO's online system

5. Simplified Portfolio Tracking: One international registration number, one renewal date, one central record

6. Flexibility: Add more countries anytime through subsequent designations

7. No Local Attorney Required for Filing: File through your home office without needing attorneys in 10+ jurisdictions (though local counsel may be needed for refusal responses)

8. Fast International Date: International registration date is established quickly (3-6 months), giving you priority across all designated countries

Disadvantages and Limitations

Despite its advantages, the Madrid Protocol has meaningful limitations and risks to consider.

Key Disadvantages

When Madrid May Not Be Best

Direct filing may be better if:

• You only need 1-3 countries (direct filing is comparable cost)
• Your target country is not a Madrid Protocol member
• Your base mark is weak or recently filed (high central attack risk)
• Individual country fees via Madrid are significantly higher than direct filing (rare but possible)
• You need faster protection in specific countries (some national offices are faster than Madrid + national examination)

Selecting Countries to Designate

Strategic country selection is crucial for maximizing the Madrid Protocol's value while managing costs and risks.

Factors for Country Selection

1. Current Market Presence

   • Where do you currently sell goods or offer services?
   • Where are your customers located?

2. Planned Expansion

   • Which markets do you plan to enter in the next 2-5 years?
   • Better to file early and establish priority

3. Manufacturing and Supply Chain

   • Where are your products manufactured?
   • Where do suppliers operate?

4. Digital Business Considerations

   • For e-commerce and SaaS: Protect in countries where users are located
   • For mobile apps: Consider major app stores' jurisdictions (US, EU, China, Japan, South Korea)

5. Enforcement Concerns

   • Known for trademark squatting? (e.g., China) → File early
   • Strong enforcement mechanisms? → Prioritize for brand protection

6. Cost-Benefit Analysis

   • High individual fees may suggest direct filing instead
   • Supplementary fee countries are cost-effective through Madrid

Common Country Groupings

Madrid vs Direct Filing: Decision Framework

Choosing between Madrid Protocol and direct national filing requires evaluating your specific circumstances.

Decision Matrix

Calculation Examples

Scenario 1: 6 Countries, Established Business

• Countries: US, UK, Canada, Australia, Japan, Germany
• Base Mark: US registration, 3 years old, actively used
• Recommendation: Madrid Protocol
  • Estimated cost: ~$2,500-3,500
  • Direct filing cost: ~$5,000-9,000
  • Centralized management and renewal

Scenario 2: 2 Countries, Startup

• Countries: US, EU
• Base Mark: US application filed 3 months ago
• Recommendation: Direct filing
  • Estimated cost: ~$1,100-1,300 direct vs ~$1,500-2,000 via Madrid
  • High central attack risk (recent application)
  • Not enough countries to justify Madrid's complexity

Scenario 3: 15 Countries, Scale-Up

• Countries: US, EU, UK, Canada, Australia, China, Japan, South Korea, Mexico, Brazil, India, plus 4 others
• Base Mark: EUTM registration, 2 years old
• Recommendation: Hybrid approach
  • Madrid for 12 member countries: ~$4,000-6,000
  • Direct filing in non-members (Brazil, India, etc.): ~$1,500-3,000
  • Total: ~$5,500-9,000 vs $20,000-40,000+ all direct

Frequently Asked Questions

What's Next

You now understand how the Madrid Protocol works and when to use it for international trademark protection. The next step is understanding how different countries examine trademarks differently. Chapter 15 covers key differences between major jurisdictions—from use requirements to opposition periods—so you can anticipate each country's specific rules and avoid costly mistakes.