Expanding a business globally necessitates protecting its most valuable asset—its brand. For trademark owners, this means securing protection in each jurisdiction where the mark will be used. Two principal routes are available: The Madrid International Registration System and National (Direct) Filing. Each approach has distinct advantages and limitations, and the optimal choice depends on a company’s specific strategy, budget, and geographic focus.

u  The Madrid System: A Centralized Approach

The Madrid System, administered by the World Intellectual Property Organization (WIPO), provides a centralized mechanism for seeking trademark protection. It allows an applicant to file a single international application (in English, French, or Spanish) and designate multiple member jurisdictions (currently over 110). Importantly, the Madrid System does not create a unitary “world trademark”; rather, it generates a bundle of national rights, examined and granted (or refused) by each designated office, but procedurally managed through WIPO.

Advantages of the Madrid System

1.       Cost-Effectiveness for Broad Coverage
When seeking protection in numerous countries, the Madrid route is generally more economical. Applicants pay a single set of fees to WIPO plus individual designation fees (often lower than national filing fees), avoiding duplicative local filings at the outset.

2.       Administrative Efficiency
Recordals of changes (e.g., change of name or address), renewals, and even assignments can be handled centrally through WIPO. This reduces the need to engage local counsel in every jurisdiction for purely administrative tasks.

3.       Flexibility for Expansion
Subsequent designations allow trademark owners to add new member jurisdictions after the initial filing, without repeating the entire filing process.

Disadvantages of the Madrid System

1.       “Central Attack” Risk
For the first five years, the international registration is dependent on the validity of the basic (home) application or registration. If the basic mark is cancelled, limited, or successfully challenged during this dependency period, the international registration will be affected to the same extent. Although it can be transformed into national applications, the costs will be significant.

2.       Indirect Communication
Office actions and refusals are issued by each designated office but transmitted via WIPO. This indirect process can create delays, and applicants may still need local agents to address substantive refusals.

3.       Risk of Uniform Errors
Any error in the international application (e.g., in the list of goods/services or owner details) will propagate across all designations, potentially undermining the validity of the entire bundle.

4.       Geographic Limitations
The Madrid System only covers its member jurisdictions. Non-members—such as many countries in South America and parts of Africa—still require separate national filings.

uNational (Direct) Filing: An Independent Approach

This approach involves filing separate, independent trademark applications directly with the trademark office of each target country, typically through local counsel.

Advantages of National Filing

1.       Complete Independence
Each national registration is autonomous. An adverse outcome in one jurisdiction (e.g., cancellation or opposition) has no bearing on registrations elsewhere.

2.       Direct Local Expertise
Engaging local attorneys provides access to in-depth knowledge of local law, practice, and language—essential for navigating office actions, oppositions, or enforcement proceedings.

3.       Tailored Protection
Applications can be adapted to local requirements (e.g., classification practice, acceptable specifications), ensuring compliance and minimizing objections.

4.       Coverage Beyond Madrid
For jurisdictions not party to the Madrid Protocol, national filing remains the only route to protection.

Disadvantages of National Filing

1.       Higher Cost for Multi-Country Portfolios
Each application requires local counsel and official fees, which scale significantly when seeking broad coverage.

2.       Administrative Burden
Changes of ownership or address, as well as renewals, must be filed separately in each country, generating repetitive legal and official costs.

3.       Complex Portfolio Management
Different renewal periods, local practices, and attorney relationships must be tracked individually, requiring robust docketing systems.

u  Conclusion: Which Strategy is Right for You?

The choice between the Madrid System and National Filing is strategic:

·         Madrid System is preferable for SMEs or companies targeting five or more Madrid member states in the near term, particularly if budget and streamlined administration are priorities, and the home mark is secure.

·         National Filing is advisable for companies seeking protection in one or two foreign markets, in non-member states, or where absolute independence and local expertise outweigh cost concerns.

·         Hybrid Approach: Frequently, a combination is optimal—using the Madrid System for broad member coverage while pursuing national filings in strategically important non-member states or high-stakes jurisdictions.

Engaging experienced trademark counsel is essential to evaluate the appropriate mix, tailored to each company’s commercial objectives, risk profile, and budget.

(By Shirley PENG)