What is the Madrid System?

This article also answers the following questions:

  • What is the Madrid Protocol?
  • What is the Madrid Agreement?
  • What classes of trademarks are there?
  • What are the member states?
  • Am I entitled to file under the Madrid System?

The Madrid System is used for the registration of trademarks and allows a trademark owner in a member state to obtain an international registration from WIPO, designating the desired member states to extend to.  This protection on the trademark can then be extended as and when new jurisdictions join Madrid, or if the owner chooses to select other member states.  The Madrid System allows a trademark to be protected in several countries by simply filing one application directly with a national or regional trademark office, under one set of fees.  Once all designated countries agree to the trademark protection, the mark will be protected in the same manner as if it had been registered directly with that country’s office.  The International Office registers the trademark and reports to the designated countries, which then evaluate the request individually.  If the mark request goes against any internal legislation requirements, it can be refused.  Once registered, the mark must be used in the designated countries within 5 years of the registration, and should not be discontinued from use for a period of more than 5 years.  There are two treaties which make up the Madrid system: the Madrid Agreement and the Madrid Protocol.

What is the Madrid Agreement?

The Madrid Agreement has been operational since 1891 and has 56 member states.  It allows the the owners of an existing trademark registration in a member state to apply for an international trademark registration, based on the original registered trademark.

The procedure occurs as follows:

  1. Own a registered trademark in Country of Origin.
  2. Apply for international registration with the International Bureau (IB) at WIPO who examine the application.
  3. Once satisfied, WIPO record the trademark in the international register and a certificate is sent to applicant.
  4. The international registration is then published in the WIPO Trademarks Gazette and selected member states are notified of its existence.
  5. A period of 12 months is given for member states to notify the IB of any refusal, objections or oppositions.
  6. In the case of oppositions, an applicant must then set up prosecution.
  7. Once granted, the maintenance fees are paid for in 10 year periods, and can be renewed indefinitely.
  8. For the first 5 years, the international registration is dependent on the original registration from the Country of Origin.  Therefore, an opposition attack on the original registration, known as a “central attack” can result in the owner losing their entire trademark portfolio in one go.

Some disadvantages were found for the Madrid Agreement which resulted in many countries refusing to join.  The precariousness of a central attack on a trademark, the inflexibility of the 12 month notification period, the stipulation to use the French language for correspondence, and the need for an original registered trademark added up to WIPO adopting a new treaty that would make the Agreement more attractive to non-members: the resulting Madrid Protocol.

What is the Madrid Protocol?

The Madrid Protocol, which has been in operation since 1989, with the EU Community Trademark joining in 2004, allows the trademark applicant to apply for an international registration concurrently or immediately after filing an application in a member state.  Therefore, the original trademark does not have to have been granted before the international registration is applied for, substantially cutting down on time.  The national examination period for the designated states to raise issues with the IB has been extended from the original agreement to 18 months if needed, allowing countries more time to carry out the examination procedure.  Finally, a process known as “transformation” is now allowed where, if an international registration is cancelled, national applications can still be filed claiming priority date from it within 6 months of cancellation.

What are the Classes of Trademarks?

The International Classification of Goods and Services, also known as the Nice Classification, separates trademarks into 45 different classes: 34 classed as goods and 11 classed as services.  Many products and services can fall into more than one class, and most countries accept one application to cover the several classes.  However, other countries require a separate application for each class.  At least 147 states, as well as WIPO, OAPI, ARIPO, BOIP and OHIM organisations, use these classifications.

What are the Member States?

A list of the Madrid Agreement and Protocol member states is given here.

Am I Entitled to File Under the Madrid System?

To check whether you have entitlements to file a request for registration of your trademark under the Madrid System, WIPO offer an International Application Simulator.  This tool is extremely useful in indicating member countries and territories that you can designate protection in, and also offers an indication of application costs as well as advice on how to file your application.

How much does it cost to go through the Madrid System?

Through the Madrid System, one filing will trigger a single trademark registration which will cover all or selected member states, and centralised administration eases the process.  However, unless an application is made in at least three or four countries, an international trademark registration is not generally considered cost-effective.  Below is a table of the total fees charged for an international application, in Swiss Francs (CHF), however the individual designation fee can vary for each country, as well as additional fees.  For example, the USPTO charges an extra “certification fee” of $100 per class, if the international application is based on a single U.S. application, or $150 per class if based on more than one U.S. application, for certifying the application and sending to the International Bureau.

FeeAmount (in CHF)
Basic653 CHF for black and white
903 CHF for colour
Standard designation73 CHF
or individual amount for each country
Supplementary73 CHF after designation of more than three classes
 The WIPO website shows the fees for the international registration of a trademark through the Madrid System.  A useful fee calculator supplied by WIPO allows a calculation for the registration, based on the applicant Country of Origin and the number of member states to apply to, as well as classes.  If an application is made for more than a certain number of , a supplementary fee is paid.