What is the Madrid System?
The Madrid System is administered by the World Intellectual Property Organization (WIPO). Under the Madrid System, you can register and manage protection of your trade mark in multiple countries at the same time in one application. You can apply in over 128 countries through the Madrid System.
How does it work?
Here's a quick video that explains what the Madrid System is and how it works.
What is the Madrid System?
If you want to get protection of your Australian trade mark overseas, applying under the Madrid System might be the way to go. The Madrid System allows you to file trade mark applications in a number of countries through one application.
The Madrid System is administered by the World Intellectual Property Organization, or WIPO for short. Australia is a signatory member of the Madrid System along with over 128 other countries.
Applying under the Madrid System allows you to have your application examined according to the trade mark legislation in the designated country, and if you want to change details or renew international registrations, it only takes a single request.
Because you don’t have to file multiple applications directly to each target country, it may ultimately save you time and money.
Want to learn more? Check out our Madrid System page.
Can I apply under the Madrid System?
To be considered eligible, you'll need to either be:
- A national of one of the Madrid System member countries
- A resident of one of the Madrid System member countries
- Have an industrial or commercial establishment in one of the Madrid System member countries.
Australia is a signatory country of the Madrid System, which means that Australian nationals and residents are eligible.
Why should I apply under the Madrid System?
There are many benefits in applying under the Madrid System. It allows you to:
- Apply for protection in multiple countries at once
- Save time and costs by avoiding preparing and filing multiple applications directly to each target country
- Have your application examined according to the trade mark legislation and laws in the designated country or region
- File without needing to find an agent in each country first
- Make a single request for changes of details, or to renew international registrations
- Add other member countries at a later date
- Communicate with WIPO in English.
What to consider before applying
Before you apply through the Madrid System, you'll need to make sure your application meets the following requirements:
- The application needs to be based on an existing Australian trade mark application or registration. This is called the basic application/registration
- The trade mark has to be the same on the international application as it is on the Australian application
- You have to have the same owner listed for both the Australian and international application and registration
- The goods and services in your application must be covered by the claims in the Australian application and registration
- If you have multiple identical trade marks, you can list them in the same application if the trade marks and applicants are the same.
How to apply
You can file your application through Madrid e-Filing. Madrid e-filing is the online system for filing an international trade mark application.
You'll need to:
- Log in or create an account with online services
- Navigate to: Apply for IP rights > Apply for an international trade mark. You'll be directed to the e-Filing system from here
- Submit your application
- Payment is made as the final step in e-Filing and it's made directly to WIPO in CHF currency (Swiss frank)
If you need help, we've prepared a guide on how to apply using the Madrid e-Filing system.
How to manage your trade mark
You can manage your international registration through the Madrid System. This includes making changes or updates, adding additional countries or cancelling your trade mark.
You can add additional countries or regions to your existing international registration when markets expand or when new countries or regions join the Madrid System. This is known as subsequent designation.
Before applying you need to:
- Have an international registration number assigned to your application by WIPO
- Understand that all designated countries on your international registration will have the same date of renewal — ten years from the date of the original filing.
Filing a subsequent designation
A request for subsequent designation can be made directly to WIPO online using their E-subsequent designation.
Once you have submitted the form, you'll receive a confirmation on screen and by email.
Your international trade mark is usually based on an Australian application or registration. This is called the basic trade mark.
Making specific changes to your basic trade mark within the first five years of lodgement in the Madrid System can cause your international trade mark to cease.
If an action has started within the first five years that results in basic trade mark IP rights ceasing, for example non-use or court action, we'll still notify WIPO even if the action finishes after the five-year period has lapsed.
When WIPO receives this notification, it will make the same changes to your international registration and notify the holder as well as the relevant designated countries or regions.
You may be able to retain your rights in individual countries or regions by requesting your international registration be converted to a national application. This is called a transformation request.
- Filing a request to transform with the designated office within three months of WIPO recording the cancellation
- Your filing date changing to the date of international registration.
You'll need to contact the designated country or regional office for information how the process works in the country.
Frequently asked questions
It can be tricky to understand how the Madrid System works. Here's the answers to some of the most common questions we receive.
I need to make a change to the representation of my Australian trade mark(s) that is allowable. How will that affect my registration in the Madrid System?
Once you have a Madrid System registration, changes to the representation of basic mark(s) that are allowable under national or regional laws won't affect the Madrid System registration. WIPO understand that these changes may occur. The trade mark representation of your Madrid System registration won't change to match the national or regional trade mark.
Can I have a different owner(s) for my Madrid System application than for my Australian trade mark?
No. The ownership details must be exactly the same when filing. All owners of the Australian mark must be recorded exactly as they are on the Australian application (spelling, capital letters, full name, etc). You may wish to update ownership of the Australian trade mark before filing your Madrid System application.
The six month deadline to claim priority from the filing of the Australian trade mark has passed. Can I still file my Madrid System application?
Yes. A Madrid System application can be filed at any time after the Australian trade mark/s it's based on.
I've received my registration certificate from WIPO. Does that mean my trade mark is registered now in the countries I selected?
When WIPO register an application it means they have approved it, entered the details into the register, and passed the application on to the nominated countries. It's up to the IP Offices in those countries to grant or refuse protection.
I've received a provisional refusal from a country. What do I do?
A provisional refusal is similar to receiving an adverse examination report on your Australian trade mark. The notification will include:
- Reasons for the refusal
- Any further steps that are required (including the time limit to respond)
- Review or appeal options
- Whether or not you must appoint a local agent to assist you.
Read the notification carefully. Depending on the issues raised and the country involved you may need to respond directly to their Office, or by filing a response via WIPO (such as a limitation of the list of goods and/or services).
How do I respond to an unable to certify or irregularity notice I have received?
You'll need to type, or attach, your response to the issues raised in the Madrid application form itself. We'll send you a notice with instructions on how to respond. Your response will be reviewed by us before being forwarded to WIPO. Don't send your response directly to WIPO yourself.
How do I make the choice between filing using the Madrid system and filing directly?
You may want to file directly if:
- That country isn't covered by the Madrid System
- You only want protection in one other country
- The trade mark you want to use internationally is different to the one you use in Australia. For example, you might want to file a translation or transliteration, or choose a trade mark that's more culturally suited to the international market. It's possible to file for these different trade marks through the Madrid System but because you'd need to file in Australia first, a direct application may be more suitable
- You plan on trading in different goods and services in different countries. This is important if the goods or services you want to protect overseas aren't covered by the claims made in your Australian application.
The best option will depend on your unique needs and may include the option to file using the Madrid System as well as directly. A trade mark attorney who specialises in your country of interest can help you make this decision.
How do I find goods and services that will be acceptable across countries or offices?
Acceptable claims for goods and services vary across the world. Consider consulting the Madrid goods and services manager which can tell you what claims are acceptable to WIPO and other countries and offices.