Madrid System - The Basics

The Madrid System is an international system for obtaining trade mark protection in a number of countries and/or regions using a single application. Protection (an "International Registration") can only be obtained for countries and regions which have joined the system (member countries), and these are listed below.

International Registrations give a bundle of rights administered centrally via the World Intellectual Property Organisation (WIPO) in Switzerland.

Member Regions

In addition to many individual countries, there are three regions which can be designated in an International Registration under the Madrid System.

One is Benelux: this comprises Belgium, The Netherlands and Luxembourg; they are in effect treated as one country - it is not possible to designate them separately.

Another is the European Union (EU); all member states of the European Union (with Benelux treated as one - see above), except for Malta, can be designated separately, in addition or as an alternative.

The third is the African Intellectual Property Organization (OAPI); please see below for list of the member countries.

Who can apply?

To use the Madrid System, you must be domiciled in, a national of, or have a “real and effective industrial or commercial establishment” in a member country. You must also have an application or registration in that member country to use as the “home” application/registration. For example, a UK company or UK national may apply if they have a UK application or registration. 

Home Application/Registration

An international application can be based on either a pending application or an existing registration. If filing based on a pending application, it is often worthwhile waiting for grant to occur before filing an international application based on it, so that any problems arising during the application process will have been dealt with.

It is possible to base an international application on more than one UK application/registration for the same mark.

What are the advantages?

• The cost will almost certainly be less than applying separately for registration for each member country/region. However, the costs depend on various factors, including the countries/regions designated, and we will be happy to provide an estimate after discussing your requirements.
• We can handle the application procedure for all countries/regions unless objections arise (as mentioned below). This leads to a further cost saving as we do not generally need to instruct local attorneys, although there are some countries where this is a requirement even if there are no objections.
• Protection for some countries/regions may be obtained more quickly than by using the national route. This is because strict time limits are set under the Madrid System.
• Recordal of changes of name and assignments etc. (and, for some countries/regions, licenses) is carried out centrally via WIPO. There is thus a cost saving compared with having to record such events separately in each member country/region.
• An International Registration can replace a corresponding national/regional registration without loss of rights.
• It is usually possible to add extra countries/regions later though these will have their own, later, date.

What can be applied for?

Almost any mark that would be acceptable in the member countries can be applied for. The internal application can include as many classes of goods/services as the home application or registration. It cannot include items that are outside the scope of the goods/services of the home application or registration. Within these parameters, it is possible to have different specifications of goods/services for different designations. For example, the United States will normally require a specification which is more specific than the generally worded specifications which are acceptable for most countries/regions.

How do I apply?

We can of course handle the application procedure for you.

In brief, the application is filed at the trade mark office corresponding to the "home" application or registration upon which the international application is based (“Office of Origin").

The Office of Origin checks the details of the applicant's home application or registration and forwards the application to the World Intellectual Property Organisation.

The application can be filed in either English, French or Spanish and can designate any number of the member countries/regions (except the applicant's home country/region, as this is covered by the applicant's home application or registration on which the application for International Registration is based).

Examination by WIPO

Only a formalities examination is carried out by WIPO. If there are no issues, a registration certificate will be issued and details sent to each of the offices of the designated member countries/regions listed in the international application. Note that registration of the International Registration by WIPO does not in itself give protection in the designated countries/regions.

Examination by designated member countries/regions

The offices for the designated member countries/regions each examine the International Registration. They can refuse to accept the registration for their country (or region) in whole or in part on a number of grounds such as:

1. it would conflict with existing rights (in some countries/regions refusal on this ground occurs only if a third party successfully objects);
2. it is descriptive and/or is not distinctive;
3. it is contrary to morality or public order;
4. it is likely to cause deception.

There can also be objections to the list of products/services.

The designated member countries/regions have a period of either 12 or 18 months from being informed of the designation by WIPO in which to notify refusal to WIPO or else to issue a statement of grant of protection. The 18 month period may be extended where an opposition is filed against the relevant designation.

If objections or oppositions arise and are to be responded to, then local trade mark attorneys in general have to be appointed if the objections are to be contested; where objections or oppositions arise to a designation of the UK, European Union or Germany, we can handle these.

Enforceability in various countries

We are aware that some countries, in particular Botswana, Cape Verde, Gambia, Ghana, Lesotho, Liberia, Madagascar, Malawi, Mauritius, Mozambique, Namibia, Rwanda, Sao Tome and Principe, Sierra Leone, Sudan, Swaziland, Zambia and Zimbabwe, have not yet enacted domestic legislation so as to explicitly provide protection for marks designated under the International Registration system. It is therefore doubtful that designations will be enforceable in these countries.

Assignments & Licensing

It is possible to assign an International Registration either partially or totally, including splitting it by designated countries/regions. The assignment can only be recorded if the new owner belongs to, or has a connection with, a member country/region. If this does not apply, the assignment cannot be recorded and the International Registration, or the part being assigned, remains in the name of the old owner.

Since April 2002 it has been possible to record licences centrally through WIPO in respect of some countries/regions. However some countries have issued declarations that applications to record licences must be made through the national/regional office concerned.

The national laws of some countries do not provide for the recordal of licences and these countries have issued declarations that such recordals made at WIPO are without effect.

What are the disadvantages of International Registrations?

• If within five years from the date of the International Registration the applicant's home application or registration ceases to have effect either in whole or in part, then the International Registration will be cancelled to the same extent.
• If this situation arises, then it is possible to file national/regional applications having the same coverage, claiming a date back to that of the International Registration. The total costs will then be rather greater than had the national/regional applications been filed in the first place.
• It may be some time before it can definitely be assumed that protection exists in a country/region, because some countries/regions still do not advise that they have accepted a designation and so it has to be assumed that it is protected if the relevant time for advising of refusal has expired and no refusal has been advised.

Madrid Agreement

The Madrid System is, in effect, an updated version of a system called the Madrid Agreement, which started over a century ago. As from 31 October 2015 all the members of the Madrid Agreement are also members of the Madrid System; as the Protocol takes precedence over the Agreement, the Protocol now governs all international applications and registrations. The Agreement is in effect redundant - no operations under the Agreement are now conducted.

Seeking Trade Mark Protection for the European Union

All the countries in the European Union (EU) except for Malta belong to the Madrid System; leaving aside Malta this gives a choice of four routes of protection for the EU:

• national applications;
• a directly filed European Union Trade Mark application;
• the designation of the European Union in an international application;
• the designation of the individual European Union countries in an international application.

The European Union Intellectual Property Office² treats the designation of the EU somewhat differently to applications submitted directly to them; please see our separate page for details.

A particular advantage of designating the EU (over a directly filed European Union Trade Mark) is that if the designation of the EU is withdrawn, refused or ceased to have effect (as opposed to the International Registration as a whole), that designation can be converted into subsequent designations of EU member states (except for Malta, and with Benelux counting as one) which should give substantial cost savings over the other option, conversion to national applications, which is the only option for directly filed European Union Trade Mark applications and registrations.

There are various other advantages and disadvantages to the various routes: please see our page Trade Marks: What Route to Protection? for further information.

Member countries and regions (as at 6 June 2024)

The member countries of the Madrid System are (3 May 2024):

• Afghanistan
• African Intellectual Property Organization (OAPI)¹
• Albania
• Algeria
• Antigua & Barbuda
• Armenia
• Australia
• Austria^E
• Azerbaijan
• Bahrain
• Belarus
• Belgium
• Belize
• Bhutan
• Bosnia and Herzegovina
• Botswana
• Brazil
• Brunei Darussalam
• Bulgaria^E
• Cabo Verde
• Cambodia
• Canada
• Chile
• China^4L
• Colombia
• Croatia^E
• Cuba
• Cyprus^5E
• Czech Republic^E
• Democratic People's Republic of Korea
• Denmark^6E
• Egypt*
• Estonia^E
• Eswatini* (formally called Swaziland)
• European Union⁷
• Finland^E
• France^8E
• Gambia
• Georgia
• Germany^E
• Ghana*
• Greece^E
• Hungary^E
• Iceland
• India
• Indonesia
• Iran
• Ireland^E
• Israel
• Italy^E
• Jamaica
• Japan
• Kazakhstan
• Kenya
• Kyrgyzstan
• Lao People's Demoocratic Republic
• Latvia^E
• Lesotho
• Liberia*
• Liechtenstein
• Lithuania^E
• Luxembourg
• Madagascar
• Malawi
• Malaysia  
• Mauritius
• Mexico
• Monaco
• Mongolia
• Montenegro
• Morocco
• Mozambique
• Namibia*
• Netherlands
• New Zealand^9N
• North Macedonia¹⁰
• Norway
• Oman
• Pakistan
• Philippines¹¹
• Poland^E
• Portugal^E
• Qatar
• Republic of Korea
• Republic of Moldova
• Romania^E
• Russian Federation
• Rwanda
• Samoa
• San Marino
• São Tomé and Principe
• Serbia
• Sierra Leone*
• Singapore
• Slovakia^E
• Slovenia^E
• Spain^E
• Sudan
• Sweden^E
• Switzerland
• Syria
• Tajikistan
• Thailand
• Trinidad and Tobago
• Tunisia
• Turkey
• Turkmenistan
• Ukraine
• United Arab Emirates
• United Kingdom¹²
• United States of America
• Uzbekistan
• Vietnam
• Zambia
• Zimbabwe*

1) Official name: Organisation Africaine de la Propriété Intellectuelle. Its members are Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, The Republic of Congo, Côte d'Ivoire, Gabon Guinea, Equatorial Guinea, Mali, Mauritania, Niger, Guinea Biaasu, Senegal and Togo.

2) i.e. Belgium, The Netherlands and Luxembourg - which are designated as one "member country".

3)  Constituent territories of the Netherlands Antilles until it was dissolved in October 2010.

4)  Excluding Hong Kong and Macau.

5)  Only effective in Southern (Greek) Cyprus because of the political situation in that country.

6)  Covers Greenland as regards International Registrations and subsequent designations dated 11 January 2011 or later. Covers the Faroe Islands, as regards International Registrations and subsequent designations dated 13 April 2016 or later.

7)  Automatically covers some (but not all) overseas territories of European Union countries. Does not cover Northern Cyprus.

8)  Including all Overseas Departments and Territories.

9)  Does not currently include Tokelau.

10) North Macedonia was previously officially called the Former Yugoslav Republic of Macedonia and unofficially called Macedonia.

11) There are special requirements for licence recordals for The Philippines.

12)  The UK extended the application of the Madrid System to the territories of Gibraltar and Guernsey with effect from 1 January 2021. Also covers the Isle of Man, Jersey and the Falkland Islands.

E)  European Union Member

*)  See section regarding enforceability in various countries.

This information is simplified and must not be taken as a definitive statement of the law or practice.