The WIPO Madrid System allows you to register your trademark internationally and protect it in more than 130 states, saving you time and effort.
For global protection, the Madrid System is recommended in most cases: a single international application filed with the Office of Origin at WIPO, which is subsequently extended to the countries you choose. A prerequisite is always a basic mark or at least a basic application in your country of origin. Important to note: national offices still examine individually; the international procedure does not replace local examination.
In short: - The Madrid System is more cost-efficient than individual national applications, especially for multiple countries, but requires an existing basic mark in the country of origin. - Filing is only possible for persons with an entitlement (nationality, domicile or establishment) in a member state and depends heavily on the existence of the basic mark. - Fees for an international application start at CHF 653 for black-and-white marks and CHF 903 for colour marks, to which regional fees and an additional EU transmission fee are added. - The procedure comprises filing with the Office of Origin, formal examination by WIPO, and final examination by national offices, with deadlines of between 12 and 18 months for provisional refusals. - A targeted selection of countries is often more cost-effective for less internationally active companies than a broad filing, and professional advice avoids missed deadlines and errors.
Table of contents
- What is the Madrid System and who benefits from it?
- Who may file an international trademark application?
- Costs and fees for international trademark registration
- Procedure: From filing to national examination
- Preparation: Search and class selection before filing
- The EU trade mark as a basis: What to consider when designating the EU
- Practical insights from Sobiera Legal Consulting
- Broad or targeted filing? A brief assessment
- How Sobiera Legal Consulting supports you with the application
- Sources
- FAQ
What is the Madrid System and who benefits from it?
The Madrid System is an administrative mechanism of WIPO that allows you to protect a trademark in several countries simultaneously with a single application. Instead of filing twelve separate applications with twelve different offices, you submit one application, designate the desired Contracting Parties, and manage the mark centrally via a single register thereafter. The WIPO Madrid System currently covers more than 130 states. The international registration is valid for ten years and can be renewed indefinitely.
The benefits are clear:
- A single administrative point for renewals, address changes and ownership transfers
- Less administrative burden than separate national applications
- Subsequent extension to further countries possible at any time
The disadvantage is often underestimated: each designated country examines the mark under its own law, and the entire international registration depends on the basic mark for the first five years. If the basic mark ceases to exist, the whole structure may collapse in the worst case.
Who may file an international trademark application?
Not everyone can simply approach the Madrid System. You need a so-called entitlement: you must be a national of a member state, have your domicile there, or operate a real and effective industrial or commercial establishment there. For Swiss companies this is usually unproblematic; for international founders with multiple locations a prior check is worthwhile.
In addition, you need a basic mark. This is either:
- An already registered mark at the Office of Origin (e.g. the DPMA in Germany or the IPI in Switzerland)
- Or at least a pending trademark application in the country of origin
The critical point is the dependence on this basic mark, known in technical terminology as the central attack. If the basic mark is cancelled, restricted or successfully challenged within the first five years, the entire international registration loses its effect. The WIPO Guide to the Madrid Protocol describes this principle in detail and advises defending the basic mark with particular care.
Costs and fees for international trademark registration
The WIPO basic fee for an international trademark application is detailed on the WIPO website, including CHF 653 for a black-and-white mark and CHF 903 for a colour mark. That is only the starting point, by no means the final amount.
In addition to the basic fee, complementary fees for each designated country and individual country fees, which some Contracting Parties charge instead of the standard fee, apply. Additional classes of goods or services beyond the basic coverage incur further costs. The WIPO Fee Schedule lists this structure in detail and makes clear: designating five countries costs noticeably more than an application in only one market.
If the international application is filed on the basis of an EU trade mark, an additional transmission fee of EUR 300 is payable to the EUIPO. This fee is added to the WIPO costs; it does not replace them. Before filing, it is worth consulting the WIPO Madrid Fee Calculator to calculate the total amount for your specific selection of countries.
Procedure: From filing to national examination
The process follows a fixed sequence that you should know before submitting the first application.
- You file the international application through your Office of Origin, i.e. the office where your basic mark is registered or applied for.
- WIPO examines the application formally and, if the outcome is positive, enters it in the International Register.
- WIPO then notifies each national or regional office you have designated.
- Each designated office examines the mark under its own substantive law and may issue a provisional refusal.
For responding to such a provisional refusal, many Contracting States provide a deadline of 12 months, while some allow up to 18 months. However, the exact deadline and its calculation differ considerably from state to state, as shown in the WIPO overview of response deadlines.
Professional tip: Set up a separate deadline calendar for each designation, not just a single date. Some offices count from the dispatch date of the notification, others from the date of receipt, and those few days' difference can decide the loss of protection in a critical case.
Preparation: Search and class selection before filing
The real work happens before filing, not afterwards. Anyone who skips this step risks refusals that could have been avoided with little effort.
- Check for identical or confusingly similar marks in your target markets, e.g. via TMview or the respective national registers.
- Draft your list of goods and services according to the Nice Classification as precisely as possible, without dragging along unnecessary classes that only generate additional fees.
- Select target countries based on real criteria: where do you actually sell, where are your distribution partners located, and where can an infringement actually be enforced?
A carefully drafted description of goods and services significantly reduces the likelihood of formal objections during national examination. Especially for companies active in Switzerland and the EU, it is also worth examining the distinction between company name protection and trademark law before the final name choice is made.
The EU trade mark as a basis: What to consider when designating the EU
Since 2004, an international application can also be filed on the basis of an EU trade mark, not only on the basis of a national mark. For companies with a European core business, this is often the more practical route, because a single EU trade mark already covers 27 member states.
Anyone choosing this route must plan for certain particularities:
- The EUIPO charges its own transmission fee of EUR 300, in addition to the WIPO fees
- Formal requirements and examination procedures for the EU designation differ in part from purely national procedures, as the EUIPO explains in its FAQ on international registration
- Designating the EU is worthwhile mainly if your distribution is actually Europe-wide, not limited to one or two member states
If you are active only in individual EU countries, targeted individual designations are sometimes cheaper than the blanket EU designation.
Practical insights from Sobiera Legal Consulting
In advisory practice, certain mistakes recur conspicuously often: missing preliminary searches, overly broad class lists, and missed response deadlines for provisional refusals. All three can be avoided with some preparation.
Sobiera Legal Consulting accompanies clients from the first search to the response to an objection in the target country. Direct access to lawyers in five languages, without an interpreter in between, proves particularly valuable for applications involving multiple legal systems, for instance when contracts or powers of attorney from abroad must be translated and certified. Specifically, the support includes trademark searches in the target market, filing assistance through the competent Office of Origin, deadline monitoring for all designated countries, and drafting responses if an office issues a provisional refusal.
Broad or targeted filing? A brief assessment
In my view, a broad international filing is worthwhile only if distribution is already internationally oriented or will follow shortly. For companies testing individual markets first, a targeted designation of fewer countries is often the wiser, budget-friendly choice. For more complex trademark portfolios with several countries and classes, engaging counsel is almost always advisable, if only because of the deadline burden.
— Bitblade
How Sobiera Legal Consulting supports you with the application
A specialised law firm guides you through the entire international trademark registration process, from the first search to the response to an official objection in the target country, in several languages directly with the responsible lawyer, without the detour via an interpreter.
The range of services extends from trademark search and filing assistance at the Office of Origin to deadline monitoring for each designated Contracting Party. The initial consultation and assessment of your situation is bookable from CHF 150 per hour; further services such as trademark search and filing assistance are put together by the firm on request. Anyone wishing to align their portfolio internationally will find the right starting point for an initial discussion on the overview of services.
Sources
For your own review, a direct look at the official sites is worthwhile:
This article contains general information and does not replace advice from a qualified lawyer. Consult a qualified legal professional regarding your personal situation before acting on the basis of this content.
FAQ
What does an international trademark application cost?
The WIPO basic fee is CHF 653 for a black-and-white mark and CHF 903 for a colour mark. In addition, complementary fees per designated country apply, as well as a transmission fee of EUR 300 to the EUIPO if the application is based on an EU trade mark.
How can I register a trademark Europe-wide?
A Europe-wide registration can be obtained either directly via an EU trade mark at the EUIPO or via the Madrid System with designation of the EU as a Contracting Party. The second route is particularly worthwhile if you also wish to include countries outside the EU, such as Switzerland, the United Kingdom or the USA.
How can I protect my brand names internationally?
The most practical route is via the Madrid System: you first apply for or register a basic mark in the country of origin and then file an international application with WIPO based on it. It remains important that each designated country examines the mark independently under its own law.
Can a private individual register a trademark?
Yes, the Madrid System does not require a company; it merely requires an entitlement through nationality, domicile or establishment in a member state. Private individuals can also apply for a basic mark and have it internationally registered on that basis, provided they meet this requirement.
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