Madrid Protocol for international trademark registration

What is the best way to protect your trademark internationally?

You might be confused about how to protect your trademark internationally. You probably heard that there are international trademarks, but at the same time, you can register your trademark in each country separately. What is the process? How to avoid mistakes? How not to overpay?

Register your trademark through the Madrid System of WIPO with Bonamark.com

• We have extensive experience in trademark registration, both nationally and internationally. Since 2016 we registered around 7000+ trademarks in 100+ different countries.     
   
• We offer a transparent, no-hidden-fees price structure.     
   
• The Madrid System, managed by the WIPO, is the most cost-effective way to register a trademark internationally.

WIPO is an international Intellectual Property protection agency associated with the United Nations that allows you to extend your trademark application to up to 120 countries through the Madrid System. It's important to note that not all countries are part of WIPO, so it's crucial to consider this when choosing your filing strategy.

NOTE

From the point of view of a regular business, the Madrid System is the same as the Madrid Agreement and the Madrid Protocol. There is a technical difference between those terms, but it’s not important for you as a user of international trademark registration. You can find more detailed information about the difference on the WIPO’s website. 

For whom is the Madrid System managed by the WIPO?

For businesses intending to protect their brand internationally in at least 5 countries at the same time. Using the Madrid System for registration in 1 country is usually not cost-effective, but in some very rare cases can be a valid option. 

It goes without saying that the business already has a filed or registered trademark in its home country. This is a prerequisite for accessing the WIPO’s Madrid System. 

Legal entities and natural persons can own a WIPO trademark.

Why registering a trademark through the WIPO with Bonamark is a good idea?

1. Trademark Registration through the WIPO is very cost-effective. In fact, if you want to extend your trademark to more than 15 countries at the same time, this is the MOST cost-effective way of protecting your trademark. Bonamark can provide you with an offer for national registration in any country to compare the prices. [Check this "WIPO" article to see how we compare the costs to protect a trademark using the national procedure and the WIPO procedure] 
 

2. You will need just one set of documents for up to 120 countries. No need to prepare powers of attorney for each country on your list. No need to translate your certificates or your list of products into different languages. WIPO will take care of this. 
 

3. We offer a transparent, no-hidden-fees price structure: US$799 for 10 countries (covering legal fees), with an additional cost of $50 per country beyond the initial 10. 

This fixed-price service is available in Singapore, the USA, the UK, Canada, New Zealand, EUIPO, Benelux, Switzerland, Australia, and Poland. Please contact us for a tailored quotation if your base mark is in a different country.

How to register a trademark through the WIPO? 

Check that you match the requirements to start the registration process. You must be a resident or citizen of a country that is a member of WIPO, or your company must be incorporated in a member country. Additionally, you should already own a trademark (referred to as the "base trademark") in any member country, or at least have applied for a trademark registration. 
 

Contact us to request a calculation to understand the full price of the process. It includes 3 parts: 

1. Our legal fee of US$799 for 10 countries+$50 per country beyond the initial 10. The number of classes is not important. 
2. The certification fee of your local Trademark Office (US$100-400, depending on the country)
3. The official WIPO and government fees, which we will calculate for you beforehand. The fees depend on the countries you want to protect your trademark in and several other factors. 
    

We will prepare the application and handle all the legal work to timely and correctly file your trademark application at the World Intellectual Property Organization. You will receive a filing confirmation within a few days. We will respond to any request of the WIPO free of charge. The process timeframe is different in different countries, it can take from a few months to up to 18 months.

What are the WIPO countries? 

The WIPO countries are the member states of the World Intellectual Property Organization (WIPO). However, not all the member states of WIPO signed the Madrid Agreement. It's important to note that not all WIPO member states are party to the Madrid Agreement or its protocol. Therefore, if you want to extend your trademark protection internationally, you can only do so in countries that are part of the Madrid System.

Currently, 130 countries have joined the Madrid Agreement. These countries represent 80% of the world's GDP. A complete list of all members is available at this link: WIPO Countries.

You can extend your trademark to any member of the Madrid System. The standard fee per each additional country is 100 CHF, but some countries have special custom fees. 

Want to learn more about the WIPO?

The Madrid System, administered by the World Intellectual Property Organization (WIPO), is an international trademark registration system that provides a convenient and cost-effective way for businesses and individuals to protect their trademarks globally. It simplifies the process of registering and managing trademarks in multiple countries through a single application. 

The Madrid System allows trademark owners to manage their international registrations centrally. This means that changes, such as ownership transfers or name/address updates, can be recorded through a single procedure at WIPO, and these changes are then communicated to all designated countries. This decreases the associated fees when selling or updating details of your trademark. 

Understanding the total price of WIPO trademark registration

WIPO Total Pricing Breakdown:

1. Certification Fee:

To initiate the trademark registration process with WIPO, there is a certification fee that ranges between $100 and $200(1), depending on your base country. This fee covers the administrative costs associated with validating and verifying your application.

2. WIPO Filing Fee:

WIPO charges a filing fee, which is approximately 700 CHF (Swiss Francs)(2). This fee is payable for the processing and examination of your trademark application.

3. Bonamark Fee:

The initial fee is $799(3) for the first ten countries you wish to cover. For each additional country beyond the initial ten, an extra fee of $50 is charged. 

4. Government Fee:

For each country you add to your trademark registration, there is a government fee imposed by the respective country. The government fee per country typically starts at 100 CHF (4), but it may vary as some countries have higher charges. 

5. Final Government Fee:

A handful of countries require payment of a final government fee once your trademark is accepted to registration.

We collect the certificate and legal fees and will provide you with instructions on how to pay the Government and WIPO filing fees. The latter fees are submitted in Swiss Franks to the WIPO’s account in Switzerland. 

The total price per country decreases as you add more countries to your trademark registration application. This means that the more countries you include, the lower the cost per country will be.

Getting a Clear Quotation

Considering the various components and variables involved in WIPO trademark registration, it is crucial to obtain a clear quotation to understand the precise cost for your specific requirements. Bonamark.com is a reliable source where you can request a detailed quotation tailored to your trademark registration needs. By obtaining a clear quotation, you can better plan and budget for the trademark registration process.

By understanding the breakdown of costs and obtaining a clear quotation from Bonamark.com, you can make informed decisions regarding the protection of your intellectual property on an international scale.

Pro tips when registering a trademark through the WIPO

1. Run a search to check if your mark is available in a particular country. It makes sense to limit your list of goods or services if there is a conflicting mark. This will help you avoid hiring local attorneys to respond to the objection. 
    
2. Check local regulations. If you register your mark in the US through the WIPO, remember that you must submit a declaration of use every 5 years, and you will need a local attorney for this. Bonamark will provide you with a local attorney upon request. 
    
3. Think ahead. If your mark is refused in any country, you will need a local attorney to fix the application. If you file with Bonamark, we will provide you with an estimate from our local attorney almost immediately.  
    
4. If your local mark is in 10 classes, you don’t have to extend all 10 classes through the WIPO’s Madrid System. You can limit the number of classes and propose different descriptions of goods or services for specific classes. 
    
5. Keep track of any correspondence you receive from the WIPO. Some of it will contain important deadlines.  
    
6. When you receive a registration certificate 2-3 weeks after your mark was filed, it doesn’t mean that your trademark is protected in all countries. You will need to wait for a STATEMENT OF GRANT OF PROTECTION. Some countries will issue it only 18 (!) months after the filing date.  
    
7. A trademark extended through the WIPO’s Madrid System doesn’t have the same force in every WIPO country. The US, the EU countries, Canada, etc. will give it the same level of protection as for a national mark. But some other countries, for example, China, and Vietnam, will require you to obtain a national confirmation of registration to enforce your trademark. It will cost around US$200. In some countries, Tajikistan, for instance, a WIPO mark will have very limited protection. If the Central Asian countries are important for your business, consider filing national applications instead of the WIPO trademarks.