The Madrid System for Trademarks: Powerful, But Not Always the Right Tool

Home | China Law Blog | The Madrid System for Trademarks: Powerful, But Not Always the Right Tool Table of Contents Toggle The Madrid System for Trademarks: Powerful, But Not Always the Right Tool The Madrid System for trademarks is like a chainsaw: incredibly powerful in the right hands, potentially destructive in the wrong ones. Here's how to wield it safely. This international trademark registration system allows applicants to extend a "basic" trademark application (typically filed in their country of origin or domicile) to other participating countries through a centralized and relatively streamlined process, administered by the World Intellectual Property Organization (WIPO). Used well, the Madrid Protocol can be a powerful and elegant tool for international trademark protection. Used blindly, it can create expensive, time-consuming, and avoidable problems, especially in procedurally rigid jurisdictions like China. Let's look at how the Madrid System for trademark registrations works, when it shines, and when it should be avoided. How the Madrid System Works & Where It Saves You Money Let's say you've filed a U.S. trademark application for a mark in one class, and you now want to extend trademark protection to Canada, Mexico, and Colombia, all Madrid members. You can file a single International Application through the USPTO, which is then transmitted to WIPO for processing. Here's what the official fees would look like: Madrid System Filing Costs Example (3 Countries) Fee Type Amount (CHF) USD Equivalent (approx.) WIPO Basic Fee 653 CHF ~$730 Canada Designation 299 CHF ~$335 Colombia Designation 260 CHF ~$290 Mexico Designation 132 CHF ~$150 USPTO Certification Fee N/A $100 Exchange rate: CHF 1 ≈ USD 1.12 as of June 2025. Your total outlay would be around $1,605, assuming no refusals or complications. Importantly, there's no requirement to hire local counsel in the designated countries unless there's an issue. That's the core attraction of the Madrid System: consolidated filing, centralized management, and initial cost savings. The Madrid international registration system works best for businesses seeking trademark registration across multiple jurisdictions with straightforward marks and clear goods/services descriptions. When Madrid's Initial Savings Disappear Handling Provisional Refusals Once WIPO accepts the application, it issues an International Registration (IR) and forwards it to the trademark offices of the designated countries for substantive examination. If no objections are raised, you're done, and you've avoided the time and expense of working with counsel in three different countries. However, if a country issues a provisional refusal—for example, if Canada says your mark is too similar to an existing one—you'll need to engage local trademark counsel in that country to respond. Cost-Benefit Analysis for Multiple Countries Even then, the Madrid System often results in lower overall costs for international trademark applications, especially when: You are filing in five or more countries. The mark is relatively straightforward and non-controversial. You don't expect major enforcement activity in every country. Still, as the number of countries increases, so does the risk that one problematic jurisdiction will create a disproportionately expensive detour. The Danger of a "Central Attack" on Your International Trademarks Here's where the chainsaw starts to rattle. Understanding the Dependency Period For the first five years after the international registration is issued, the entire international registration is dependent on the "basic" application or registration (in our example, the U.S. one). This is called the dependency period. If the USPTO refuses or cancels your U.S. application or registration during that time, the entire international registration collapses, including all the designations in other countries. This is known as a central attack. Your Last Line of Defense: Trademark Transformation If your international registration is canceled due to the failure of the U.S. application, you can still file "transformed" national applications in the affected countries within 3 months of cancellation. These transformed applications retain the original priority date, but: You'll need to hire local counsel in every country you designated. You're stuck with the goods/services as they were worded in the international registration. You lose the benefit of centralized filing and control. In short, you go from having a single coordinated trademark strategy to fighting multiple fires, in multiple languages, with limited flexibility. Why We Rarely Use the Madrid System for China Trademarks The Deceptive Simplicity of Madrid China Filings When clients ask whether they should file a trademark in China through the Madrid System, our answer is almost always the same: you are better off filing directly with China's Trademark Office. Madrid makes the process look effortless—just check a box and you're done. But that simplicity is misleading. While a Madrid filing may seem quick and cost-effective upfront, problems often surface later—and resolving them can be time-consuming, costly, and frustrating. As one of the few U.S. law firms with Mandarin-fluent IP lawyers who regularly handle China trademark matters, we've seen this play out repeatedly. Companies and even other lawyers frequently come to us after a Madrid filing for China has failed to provide the protection that they thought they were getting. Challenges with Madrid Registrations in China When filing directly in China, your trademark attorney can tailor your filing to the specific subclasses most relevant to your brand. But with a Madrid application, Chinese examiners assign subclasses themselves, without consultation. The result can be overbroad or underinclusive protection, with serious consequences for enforcement. Even successful Madrid System trademark registrations can encounter enforcement hurdles in China. Authorities such as customs or local enforcement bureaus often require a Chinese-issued trademark certificate or official record before taking action. For international registrations via Madrid, the initial documentation comes from WIPO, not CNIPA. Requesting a Chinese confirmation or extract can take weeks or even months, which may prove fatal in urgent cases, such as counterfeiting crackdowns. (This same issue can arise in other countries as well, not just China.) For most clients, the better course is to file directly with China's Trademark Office. Madrid might still make sense in narrow cases, such as when you're filing in many countries and have a simple, narrowly defined list of goods. But in general, China and Madrid are not a good match. Filing route is only one part of the China manufacturing analysis. A trademark registration protects the brand, while an NNN Agreement controls what its signers can do with the information disclosed to them. Issues in Other Countries Another issue arises in countries that only allow single-class applications, such as Mexico, where an IR covering multiple classes results in multiple separate registrations. An IR covering five trademark classes will result in five separate trademark registrations, each of which must be maintained (including, in the case of Mexico, by filing Declarations of Use). While national applications will still result in a separate registration for each class, separating each class from the start can help avoid confusion. Relatedly, WIPO does not inform IR owners of Declaration of Use requirements in Mexico, and other countries that have similar requirements, such as the Philippines. How to Handle the Madrid Chainsaw Safely: Best Practices Strategic Planning for International Trademark Portfolio Management There's no way to make the Madrid System completely risk-free, but you can minimize problems with smart planning: Work with International Trademark Experts: Partner with counsel who understand both the Madrid System and the nuances of local trademark laws across multiple jurisdictions. This expertise will help you avoid common mistakes and navigate complexities that can derail international trademark applications. Use a Phased Approach: Start with a few key jurisdictions where Madrid works well, then expand your international trademark portfolio based on the results and your evolving business needs. This reduces initial risk and allows for course correction. File Nationally in Mission-Critical Countries: If a jurisdiction is central to your business strategy or brand enforcement efforts, don't leave its trademark protection to a "checkbox" in the Madrid System. Direct national filing gives you more control and better outcomes. Tailor Your Goods/Services Descriptions: What works perfectly in the U.S. may not translate well or be interpreted favorably elsewhere. Work with experienced trademark attorneys to make local adjustments—even within a Madrid application—that can significantly improve your odds of success across different trademark systems. The Madrid System – A Great Tool, IF Used with Care The Madrid System is a powerful and efficient mechanism for international trademark protection. When used strategically, it can reduce your overall trademark costs, simplify your trademark administration, and accelerate your brand rollout across borders. But it most emphatically is not a one-size-fits-all solution for global trademark registration. The risks of central attack, procedural rigidity, and local mismatches—especially in countries like China—mean that Madrid System trademark registrations should be approached with care, not assumed by default. If you're considering a Madrid System filing—or unsure whether to file nationally—we can help you assess the right strategy for your brand’s global footprint. Contact our international trademark law team to avoid costly mistakes and structure your global trademark filings for long-term enforcement success. And for more on the nuts and bolts of the Madrid Trademark System, check out International Trademark Registration: A Step-by-Step Guide to the Madrid System (2025). Check Out Our China Law Services Share Twitter Facebook LinkedIn E-mail Comment Fred Rocafort Fred leads Harris Sliwoski’s intellectual property practice and is the coordinator of the firm’s international team. Much of Fred’s practice consists of helping cannabis businesses protect their brands. He also works with entrepreneurs and companies entering the Web3 space, a new frontier for IP law. Prior to joining Harris Sliwoski, Fred worked overseas for more than a decade, in both government and private sector roles. Fred is a regular contributor to the award-winning China Law Blog and Canna Law Blog. Fred began his career overseas as a U.S. consular officer in Guangzhou, China, where he advocated for fairer treatment of American companies and citizens in China and for stronger intellectual property rights enforcement. After entering the private sector, Fred worked at a Shanghai law firm as a foreign legal advisor and later joined one of the oldest American law firms in China, helping foreign companies navigate the Chinese legal environment. He also led the legal team at a Hong Kong-based brand protection consultancy, spending most of his time out in the field, protecting clients against counterfeiters and fraudsters in Greater China, Southeast Asia and Latin America. In addition to his IP work, as a native Spanish speaker, Fred works closely with different Harris Sliwoski teams on Latin America and Spain matters. Fred also provides advice to cannabis industry participants and other businesses on import and export transactions. Fred is an ardent supporter of FC Barcelona—and would be even in the absence of Catalan forebears who immigrated to Puerto Rico in the mid-1800s. 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It makes it much easier to spot a provisional refusal early and decide which country needs attention first. I use Madrid Radar's search workspace for this: https://global-trademark-search.navilon.tech/ Reply Leave a comment Cancel reply