Madrid System (WIPO)

Madrid System for International Registration of Trademarks

Author: Ian Aldridge, Progressive Legal

On this page we discuss what the Madrid System is and how it can help you to apply for international trademark rights in multiple countries at once, with only a single application.

We also look at how you can use the Madrid System, the benefits of it, and the cost of registering a trademark with the World Intellectual Property Organisation’s (WIPO) Madrid System.

What is the Madrid System for international registration of trademarks?

The Madrid System is administered by the World Intellectual Property Organisation, also known as WIPO. It provides an efficient and cost-effective way to protect trademarks internationally.

The main advantage of this system is that it allows trade mark owners to file a single international trademark application and pay one set of fees to apply for protection in up to 130 countries – which represents more than 80% of world trade.

This minimises the effort of applying for international trademarks and allows for easier worldwide trademark management.

However, the level of protection through the Madrid System varies between countries and research should be done before applying for international trademark rights.

How to use the Madrid System for international registration of trademarks?

You can use the Madrid System if you are a national of – or have a residence or business in – any of the 130 countries covered by the Madrid System’s 114 members that have signed up to the Madrid Protocol.

Before you can use the Madrid System, you need to apply for trade mark rights in your country of origin (Australia).

Once your Australian trade mark application is filed, you can start applying for international trade mark rights using the Madrid system online services called eMadrid, through which you can file your international applications and manage your global trademark portfolio.

Our trade mark team can have a complimentary call with you to discuss your options for filing international trademark applications.

What are the benefits of the Madrid System for international registration of trademarks?

The Madrid System offers many advantages for international businesses, including:

• A simpler and cost-effective trademark application process.
• Centralised management of all trademarks worldwide.
• All communications take place in one chosen language: English, French or Spanish.
• No need to appoint local representatives in each designated country, unless objections are raised during examination or oppositions filed by third parties.
• No Powers of Attorney required.
• Geographical extensions are possible any time, allowing businesses to add countries as they become of commercial interest.
• Fixed examination period of 12 or 18 months.
• Automatic local protection if no objections are raised by a country’s trademarks office.

Despite the above, there are also some disadvantages to the Madrid System to be wary of.

For example, your international trademark rights will be subject to the status of your Australian trademark rights for the first 5 years, meaning that, if your Australian application falls through for any reason whatsoever in those first 5 years, your international trademark rights cease to exist.

Best to carefully consider your options first when considering applying for international trademark protection with one of our legal professionals in the field of trademarks.

What is the process of registering a trademark with WIPO Madrid?

International trademark applications filed through WIPO’s Madrid System can proceed to registered status following the 5 steps below:

1.       Complete your international trademark application using the Madrid Application Assistant on eMadrid.

2.       Submit the application to your local Trade Marks Office (IP Australia).

3.       Formal examination by WIPO to check that your international trademark application complies with all formal requirements.

4.       WIPO enters the trademark in the International Register and notifies each designated country included in the application.

5.       The local trademark offices in each designated country conduct substantive examinations.

Unfortunately however, it is very common to receive objections during examination of your international trade mark application, particularly when an international trade mark application is prepared without legal assistance. Once objections are received, additional costs apply and legal representation is still required in each country that issued objections, which often leads to much higher costs than anticipated.

What is the cost of registering a trademark with WIPO Madrid?

When applying for international registration of trademarks through the Madrid System, the filing fee includes a basic fee of 653 Swiss francs (or 903 Swiss francs for colour trademarks). Further fees depend on the countries you designate and the goods and services you want to cover.

You can estimate the cost of registering your trademark through the Madrid System with WIPO’s Madrid Fee Calculator.

As mentioned above, additional fees apply when objections are received during the local examination of your trade mark in each designated country.

Our trade mark team can assist you with international trademark applications using the Madrid System to ensure a strong application is put forward, and can also assist with filing your trade mark directly into any country using our network of trusted local agents.

Interested in finding out which option is likely more suitable for you? Contact us today for a complimentary phone call with one of our international trade mark experts.

Need International Trade Mark Registration Help?

Please get in touch with us today via phone or the contact form on this page.

1800 820 083