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  • Writer's pictureJeremy Rutman

International trademarks and the Madrid system - pros, cons, and costs

‘God worked six days, and rested on the seventh: Madrileños rest the six, and on the seventh go on the bullfight.’

Barcelona has this, but Madrid has trademarks...meanwhile, Vienna waits for you

Trademarks, like patents, are protected per-country, and like the PCT system for patents, there is a unified system for filing around the world - in the case of trademarks, the Madrid system actually makes things even easier.

The Madrid system

The Madrid system (or protocol), like the PCT is a treaty administered by the World Intellectual Property Organization (WIPO) that provides a unified system for trademarks - file one application in country of origin and get protection in any of 140+ countries, no translation needed.

The Madrid Protocol lets owners protect marks in several countries by filing one application directly with their own national or regional trade mark office (the 'office of origin') and then filing subsequently in whatever other countries are of interest through a unified, web-based system.

2015 image of Madrid countries - note Canada has since joined (for instance)

The system has been ratified by many countries around the world, including most European countries, the USA, Canada, Japan, Australia, China, Russia, and, in October 2004, by the European Union (EU) as such. In case you were wondering, the United Kingdom is still part of Madrid despite Brexit.


  • No local counsel needed - in Madrid, unless you get a refusal in a particular country, you do not need to hire local counsel at all, while if you go the individual national route, you have to hire local counsel in each country or region to file and relay various documents in the process

  • Lower Cost - while the Madrid official fees are sometimes a bit higher than the corresponding individual country fees, if you add in local counsel costs then Madrid will generally come out quite a bit cheaper when filing in multiple countries (see example below).

  • Easier Renewals - for the various renewals (like 10-year renewals in many countries) you can do a single renewal with the Madrid System, while if you go the individual national route, you must renew in each country.

  • Unified rules -an international registration may be obtained by simply filing one application with the International Bureau (through the office of the home country), in one language (as mentioned, English, French or Spanish) while if you use individual national filings you are beholden to different national or regional procedures and regulations,

  • Easier deadline dealing - You can file a lot quicker if you are up against the 6-month priority deadline because you don't need to retain and interact with foreign counsel before filing

  • Easier Ownership changes - if the international registration is assigned to a third party, or is otherwise changed, such as a change in name and/or address, this may be recorded with effect for all designated Contracting Parties by means of a single procedural step.


  • A Madrid registration is dependent on the base registration for the first five years. So, cancellation or refusal of your base application during that time can invalidate the Madrid Protocol registration, although there is a process for converting your international designations and grants into national registrations at least in some situations when that happens. Some countries require a local address where you can receive notifications after registration, even if you have used the Madrid Protocol.

  • For some countries you may not receive all notifications during prosecution unless you engage foreign counsel and/or take some action at the trademark office to receive the notifications.

  • Some countries allow much broader recitations of goods/services than others.

This last point may have some 'unintended consequences' - in some countries you can have a general listing for "clothing", while in the U.S. for instance you are limited to narrower listings, like "shirts" or "pants." If you file directly in foreign countries, you can include the broad categories where allowed, but if the Madrid application is based on a U.S. application then you are limited by the narrower categories in the U.S. application/registration.



First Class

2nd Class

Attorney fee (approximate)

















*EU: First class€850, Second class€50, Third and all subsequent class€150

Cost Breakdown for Trademark filings, using individual PTO's

Thus the total for going individually in the UK, EU, US, and IL would be: 200GBP + 250USD+500USD+850EU = 250USD + 250USD + 500USD + 924USD=1924USD before lawyer fees, and about 3500USD after lawyer fees.

Compare this with Madrid - using the Madrid calculator for the same group of countries with IL as country of origin you'll find:

653.00 CHF basic fee,

1584 CHF fees of contracting parties

500USD Israel filing fee

~500USD one lawyer fee

Grand Total (CHF) 2,237.00 =3499USD

In this example the cost comes out the same, but clearly as you start adding countries Madrid wins out to an increasing extent due to greatly reduced lawyer fees.

To facilitate the work of the users of the Madrid system, the International Bureau publishes the Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol.

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