The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, otherwise known as the Madrid Protocol, is an international treaty that allows business owners to apply for trademark registration in any of the countries that have joined the Madrid Protocol.
This is done by filling in one international application form, in the applicant's home language, and paying one set of fees in Swiss francs. The applicant's trademark can then be protected in up to 122 countries.
The Madrid Protocol application process is efficient, cost-effective, and does not require a local agent to do the filing. Trademark owners can designate as many or as few countries as they want (bearing in mind that a fee will be charged for each country) on a single application that will be sent to the World Intellectual Property Organization (WIPO).
WIPO coordinates the requests for protection, renewal, and other relevant documents and sends them to the relevant participating countries. If the application is approved, WIPO may issue an international registration, but it is the right of each country to determine whether protection for a trademark will be given according to their legislation.
If the country gives approval, the trademark will be protected in that country as if the application were filed directly in that country. Any changes in ownership or name or address of the holder that are made in the home country will be recorded with the WIPO's International Bureau, which administers the Madrid Protocol, and relayed to the relevant Contracting Parties.
A Contracting Party is a country that is a member of the Madrid System.
IP Offices are government offices that handle Intellectual Property services, policy, and information.
The base fee for the international trademark registration is 653 Swiss francs or 903 Swiss francs for a mark in color. There will be additional costs depending on which country you want to protect your trademark in and on how many classes of goods and services will be covered by your registration.
For example, registering a trademark with no color elements in Greece and the African Intellectual Property Organization for three classes of goods would be priced as follows: 653 (base fee) + 115 (one class in Greece) + 42 (two additional classes in Greece) + 704 (three classes in OAPI) = 1,514 Swiss francs.
Expanding the scope of your trademark coverage to include more countries, after you have obtained the international registration, will have additional fees. You can see a list of the individual fees in Swiss francs on the WIPO website.
WIPO also provides a Fee Calculator that applicants can use before applying for registration to estimate the fees payable.
Who can apply:
An individual or legal entity with a personal or business connection to any one of the countries that are Contracting Parties in the Madrid System can apply to the Madrid Protocol. This means that you must either reside in, have an industrial or commercial establishment in, or be a citizen of one of the 122 countries that are Contracting Parties with the Madrid Protocol.
You can only register your trademark through the Madrid Protocol if your trademark has already been registered with the trademark office of your home country, or the country you primarily do business in.
Why should businesses apply for the Madrid Protocol?
Trademark protection is important as trademarks communicate your brand, your products and services, and your company's reputation. Trademarks also make it easier for customers to find your products, services, and information as they distinguish you from your competitors.
You could file your trademark in the U.S. only, but if you are planning to expand your business into international markets, you will need an international trademark for the same reasons. Technically, there is no single, all-encompassing international trademark. You will need trademark protection in each country that you plan to do business in as trademarks are registered and enforced by individual states.
You can submit an application in each individual country where you will need trademark protection, or you can file an international application through the Madrid Protocol and cover all necessary countries with one application and one application fee.
Belgium, The Netherlands, and Luxembourg - treated as one country.
European Union (EU)
All members of the EU (with Benelux treated as one) except for Malta, which is not in the International Registration System - each country is designated separately, in addition, or as an alternative.
African Intellectual Property Organization (OAPI)
18 African countries - cannot be designated separately and it is not possible to file stand alone national applications for member countries.
How to Apply:
1. File a Base Application With Your Home Country.
In order to start the process, you must first file an application with your home country's trademark office. In the U.S., this would be the United States Patent and Trademark Office (USPTO). Once you have filed this application, you don't need to wait for approval and can begin the international application immediately.
2. Search the Global Brand Database.
Before filing your international application, search WIPO's Global Brand Database to find out if similar or identical trademarks already exist or are pending in your target countries. If your mark infringes on another person or legal entity's rights, you may not be able to register it.
WIPO's Global Brand Database allows you to search for registered trademarks under the Madrid System, registered Appellations of Origin under the Lisbon System, and protected emblems under the Paris Convention 6ter. You can perform one search that will cover multiple sources, use different search features to find similar or identical word marks, and use the image search function to find similar or identical image marks.
It is important to note that the Global Brand Database does not cover marks that have been filed directly (outside the Madrid Protocol) with most countries. It may, then, be best to also search the national/regional IP Offices' registers. You can find links to these IP Offices through WIPO's website on the Madrid Member Profiles page.
If you find a similar or identical mark, you may still be able to file an application for your trademark. You will need to determine if the mark you found is for the same or related goods and/or services as your own mark and if it is a live application or registration.
If the registered mark is for unrelated goods, or it is a lapsed application or expired registration, you can proceed with your application. If the registered mark is for similar goods or is a live application or registration and you choose to file your application anyway, you may receive a provisional refusal. In this case, it may still be possible to overcome the refusal but you will need to contact a local representative in the country that you have the necessary connections to.
3. File Your International Application.
International application Form MM2 (available in English, French, and Spanish) must be used and filed with the same IP Office as where you filed your base application. Form MM1 and MM3 are no longer used. The IP Office will check that it corresponds with your basic mark, certify your international application, and then forward it to WIPO. Do not send it directly to WIPO.
Applicants filing through the IP Offices of Australia and Benelux may use e-filing. Applicants that are applying for trademark protection in the United States of America must also file Form MM18, which is a declaration of intention to use the mark.
4. Pay Your Application Fees.
All application fees should be paid to WIPO, however, there are some Contracting Parties that collect the fees and forward it to WIPO on the applicant's behalf. You can contact your IP Office to determine how to submit your application fees.
You can pay your application fees into the current account at WIPO, by credit card, by bank transfer, or by postal transfer (within Europe only). WIPO details the fee structure and payment methods on their website.
5. Track Your Application.
You can receive email notifications on the status of your application by filling in your email address in section 2 of Form MM2. This will automatically sign you up for WIPO's e-Notifications Service which electronically notifies you of anything concerning your application. You can also use the Madrid Monitor to check the status of your application by selecting "realtime search" in the left-hand column.
Advantages and Disadvantages:
- The simplified application process means that you can fill out one application, in your home language, with one application fee in one currency, and register your mark in as many countries as you want.
- The process is centralized and does not require a legal representative in each of the countries that you would like to register in.
- It is easy to expand your trademark protection to other countries by using the WIPO online system and paying an additional fee.
- Examination periods are fixed at 12 or 18 months, so you can plan your business expansion and will not be delayed by the trademark application process.
- The international trademark registration lasts for 10 years and is easily renewable.
- In countries where trademark use is a requirement, the Madrid Protocol allows for 5 years of protection before you need to prove use of your trademark.
- If there is a change or challenge to your base trademark (in your home country) within the first 5 years of your international registration, you could lose all international protection.
- There are some major countries (such as Brazil, Mexico, and Thailand) that are not members of the Madrid Protocol. This means that you would need to file additional and separate applications in each of these countries.
- You cannot use your trademark differently in each country that you designate under the Madrid Protocol unless you file individual trademark applications.
- The authorities in some countries do not protect international trademarks registered with the Madrid Protocol to the same extent as locally registered trademarks.
- Your trademark registration may meet some legal issues once it reaches an individual trademark office.
- You may need to hire local legal counsel if office actions or oppositions are issued through a country's trademark office.
The Examination and Approval Process:
WIPO only conducts a formal examination of your application and, once approved, records your mark in the International Register and in the WIPO Gazette of International Marks. You will be sent a certificate of international registration and WIPO will then notify the IP Offices in all the territories that you have applied for a trademark in and send your application on to them.
The IP Offices will make a decision within 12 to 18 months, in accordance with their legislation. WIPO then records their decisions in the International Register and will notify you. If an IP Office refuses to protect your mark, it will not influence the decisions of the other IP Offices and you can contest the refusal directly before the IP Office concerned.
International trademark registration is valid for 10 years and can be renewed at the end of the 10-year period directly through WIPO.
The Effects of International Trademark Registration:
From the date of international registration, the protection of a mark registered through the Madrid Protocol is exactly the same as if it had been registered at the IP Office of the Contracting Party. However, a Contracting Party may decide to limit the trademark protection with regard to some or all of the goods or services or may decide to renounce the trademark protection with regard to some or all of the goods or services. This will only affect the territories of the Contracting Party and will not influence the decisions of any other Contracting Parties designated in the international application.
What did the Madrid Protocol do?
The Madrid Protocol is an international treaty that allows business owners to apply for trademark registration in any of the countries that have joined the Madrid Protocol.
Which countries are in the Madrid Protocol?
The Madrid Union currently has 106 members, covering 122 countries. You can see a list of the Contracting Parties on the WIPO website.
When was the Madrid Protocol signed?
The Madrid Agreement Concerning the International Registration of Marks entered into force in 1892 and the Protocol Relating to the Madrid Agreement came into operation on April 1, 1996.
What is a global trademark?
There is no such thing as a global trademark. However, you can apply for an international trademark in multiple countries through the Madrid Protocol.
Is China part of the Madrid Protocol?
Yes, but China does not always acknowledge international applications filed through the Madrid Protocol. In this case, it is better to apply at the Chinese Trademark Office.
Is Canada part of the Madrid Protocol?
Yes. Canada joined the Madrid Protocol in March 2019 and the treaties entered into force in Canada on June 17, 2019.
What is WIPO?
WIPO, or World Intellectual Property Organization, is a self-funding agency of the UN and the global forum for intellectual property services, policy, information, and cooperation.
What is the duration of an international trademark registration under the Madrid Protocol?
International trademark registration is valid for 10 years and can be renewed at the end of the 10-year period directly through WIPO.
Is Hong Kong part of the Madrid Protocol?
Not yet. The Madrid Protocol is only expected to apply to the Hong Kong Special Administrative area in 2020.