The Madrid System
The Madrid System (or ‘Madrid Protocol’) is the primary system used for protecting trade marks internationally. It facilitates the registration of trade marks in multiple jurisdictions around the world. Its legal basis is the Madrid Agreement Concerning the International Registration of Marks treaty.
The Madrid System allows you to register a trade mark in up to 131 countries. Using the system is generally cheaper and more efficient than making distinct registrations in multiple countries.
International trade marks under the Madrid system are administered by the World Intellectual Property Organisation (WIPO).
How do you apply for an international trade mark?
A Madrid System registration must be based on an existing trade mark application or registration that you hold in one of the system’s member countries – eg the UK.
You can apply through the UK Intellectual Property Office (IPO). If you do so, your application must be identical to your UK application or registration. When applying for an international trade mark, you cannot apply for a series of trade marks, as you can in the UK.
When applying via the UK’s IPO, you must fill in Application Form MM2 and either email or post it to (along with the appropriate handing fee and fee sheet (FS4)) to the IPO.
The IPO will carry out certain checks upon receiving your application, including checking:
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whether your international application is for the same mark as the UK mark on which it is based
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the date on which your UK application was received – this is the date that the WIPO will use as the filing date of your international application (as long as you’re able to claim priority – see below for details)
Who can apply?
Generally, only the holder of a trade mark (ie the person or business who owns the trade mark’s existing registration, eg in it’s UK registration) or the holder’s representative can make an application for an international trade mark. If any other party wishes to send an application form, they must have a link with the case.
When will you hear back from the IPO?
The IPO will contact applicants to deliver a payment receipt within 5 days after you send your MM2 form. Within 15 days, they will tell you whether your application has been certified or whether any deficiencies were identified. If it is certified, this means that the IPO has satisfactorily concluded their checks (eg they have established that the application is identical to your UK trade mark application) and they are ready to transmit your application to the WIPO.
What happens next?
The IPO will transmit your application to the WIPO. The WIPO will then examine your application and, if there are any irregularities, they will flag these to you. The WIPO will also forward your application to the national IP offices of the countries that you are seeking registration within. The intellectual property offices of these countries must also decide whether your mark can be registered under their systems.
What if an international trade mark is contested?
An international trade mark application may be contested (eg another party may challenge the validity of your registration) in various ways. It can be contested:
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in any of the countries that you are seeking to register in. If your trade mark is opposed in any of these countries, this will only affect your registration in that country (eg it will not affect your UK registration), or
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in the office of origin (ie in the UK). Your application may be contested if:
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your UK trade mark application changes, or
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your UK trade mark is contested in any way, in which case the international application will be affected in the same way
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For more information on applying for international trade marks, read the government’s guidance on protecting your trade mark abroad.
How do international trade mark applications interact with UK and EU trade marks?
You can make your application for an international trade mark under the Madrid System in connection with your application for a more localised trade mark registration – eg a UK or EU registration.
International trade marks and UK trade marks
You can, if you choose, apply for an international trade mark under the Madrid System at the same time that you apply for a UK trade mark.
Alternatively, you can apply for an international trade mark after your UK application but claim priority when applying for the international trade mark. This means that your international trade mark application will be treated as if you applied on the same date that you applied for your UK registration. You can only claim priority in this manner if you apply for your international trade mark within 6 months of your UK application.
International trade marks and EU trade marks
The EU has a system of trade mark registration similar to the Madrid System, which lets you make a single trade mark registration that protects your mark in all EU member states. These trade marks are called EU trade marks (EUTMs).
EUTMs are applied for via the European Intellectual Property Office (EUIPO). If you apply for an EUTM, you can use that application as the basis of an international trade mark application. In such cases, you must make your international trade mark application via the EUIPO.
How much do international trade marks cost?
The cost of an international trade mark varies depending on how many countries you want your trade mark to be protected in, and which ones. For more information, read How much does a trade mark cost?.
If you need help with any aspects of the trade mark registration process, you can Ask a lawyer or use our Trade mark registration service.
