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CEA Legal | How to Carefully Plan Your Trademark’s Registration Internationally

One of the most important aspects of a business is its brand, and the brand should be protected by registering it as a trademark in all the countries where the mark is used, is about to be used, or has a connection with.

To facilitate the process of applying for trademark registrations in multiple countries, it is advisable to use the so-called Madrid System (an international treaty that created a multinational trademark filing and registration system), which allows the mark owner to register trademarks in up to 125 countries worldwide (i.e., more than 80% of world trade), with potential for expansion as new members are joining the system (for instance, the United Arab Emirates will officially become part of the Madrid System on December 31, 2021).

There are multiple advantages to using the Madrid System. The business owner will submit one application, in front of one office (the International Bureau of the WIPO – World Intellectual Property Organization – in Geneva), paying one set of fees in the same currency (a basic fee, a supplementary fee for each class of goods and services over three, and a complementary fee in respect of each member state where one is seeking registration). However, it is essential to keep in mind that the Madrid System does not guarantee the approval of the registration, as the approvals are still granted on a country-by-country basis.

Therefore, it is fundamental to carefully plan the international trademark process, as you should determine it based on where you are conducting business and where you could potentially conduct business in the future. To start the process, you should apply for registration in your country of origin (i.e., where you are domiciled, have an industrial or commercial establishment in, or are a citizen), which needs to be a member state of the Madrid System. For instance, in the U.S. it would be at the United States Patent and Trademark Office (USPTO). Once you have applied in your country of origin, there is no need to wait for the trademark to be registered and the international registration process can begin.

However, there are certain aspects of the Madrid System that should be considered when deciding to use it. For instance, the Madrid system cannot supersede national laws, so that objections could be raised and notice of action issued by the examiner officer of each individual country; and the international application has to match the original one, meaning that it cannot cover more goods and services than those included in the original application.

Notwithstanding the difficulties that might arise, at the single-member state level, with an international registration, the Madrid system is an effective tool that can strengthen the trademark strategy of businesses.


  • Michele Cea, Esq.Founding Member & Managing Attorney, CEA LEGAL P.C.
  • Email:, Phone: (212) 618 1644

Compliments of CEA Legal P.C. – a member of the EACCNY.