Madrid System Trademark Registration Guide

Registering a trademark internationally can feel like a daunting task. After all, navigating the laws and processes of countries you aren’t located in can be complex. However, there’s good news: the World Intellectual Property Organization (WIPO) has made it easier through the Madrid System.

This system allows you to file a single application that covers multiple countries, streamlining what could otherwise be a complicated process. Although each country reviews and grants protection independently. Let’s walk through the steps involved and key things you should know. 

Step 1: Conduct a preliminary search

A preliminary trademark search is a crucial element that should be conducted before filing your application. This involves checking national and international trademark databases to ensure your desired trademark isn’t already in use.

Keep in mind that your trademark should be unique and not similar to others already registered, particularly in the classes you plan to register it under. And while you can conduct this search yourself, make sure to cover all relevant databases.

Step 2: Perform a comprehensive trademark search

A comprehensive trademark search goes beyond public databases. It includes trademarks protected under common law, meaning those that may not be officially registered but are still in use.

Because this step requires expertise, you’ll need the help of a registered trademark attorney. They’ll ensure you don’t miss any potential conflicts that could arise later, saving you time and potential legal disputes.

Step 3: File your international trademark application

Once your searches are complete and you’ve ensured your trademark is unique, it’s time to file your application.

Filing is done through the World Intellectual Property Organization’s (WIPO) online portal, which streamlines applications under the Madrid System. This system allows you to seek trademark protection in multiple countries using a single application, saving time and reducing complexity compared to filing individually in each country.

The cost of filing starts at approximately $600 per registered class. However, the total fees can vary depending on several factors, including the number of classes your trademark falls under and the countries in which you’re seeking protection. Some regions have higher individual fees, so if you’re targeting multiple jurisdictions, it’s essential to budget for additional costs.

Before submitting your application to WIPO, you’ll need to go through a certification step. Your national trademark office—such as the United States Patent and Trademark Office (USPTO) or the European Union Intellectual Property Office (EUIPO)—must certify your trademark application. This ensures that the details of your international application align with your national registration or pending application.

Once your application is certified, it can be submitted to WIPO, which will then forward it to the trademark offices of the countries you’ve designated for protection. Each country will review the application independently, which means their approval processes and timelines can vary.

Step 4: Review by the WIPO

After submitting your application, the WIPO conducts a formal review to ensure it complies with all requirements under the Madrid System. This is a critical step in the process, as the WIPO’s role is to ensure your application is complete, accurate, and properly prepared before forwarding it to the designated national trademark offices.

During this review, the WIPO may issue what is known as an irregularity notice. This notice serves as a formal alert that your application contains errors, omissions, or other issues that need to be corrected. Common irregularities include missing or inaccurate information, discrepancies between your national trademark and the details in your international application, or failure to meet technical requirements, such as classification errors.

If you receive an irregularity notice, it’s important to act swiftly and strategically. You’ll typically have a limited timeframe—often within 60 days—to address the concerns raised. At this stage, you can choose to respond independently or seek the assistance of an experienced trademark attorney.

When preparing your response, thoroughly review the irregularity notice to ensure you understand all objections. For each issue, provide clear, detailed explanations or corrections as required. Missing or incomplete responses can result in significant delays or even outright rejection of your application.

Step 5: Approval and registration

Once you successfully address any irregularities, the WIPO will:

1. Grant your international trademark registration.
2. Issue a certificate of registration.
3. Publish your trademark in the International Gazette.

It’s important to note that while WIPO’s registration is a significant milestone, it does not automatically confer protection in all countries. Each country has the authority to review your trademark according to its own laws and may accept or reject it independently.

Protect your business with modern, efficient filing solutions

International trademark registration doesn’t have to be daunting. The Madrid System streamlines the process, allowing you to protect your brand across multiple countries with a single application. While the steps require careful planning, the benefits of securing your intellectual property on a global scale are invaluable.

Take the first step today, and ensure your brand stays yours, no matter where your business takes you. The world is open for your growth — make it yours with the Madrid System.

Additional resources

• How to Renew Your Trademark: A Simple Step-by-Step Guide