What Is an International Trademark Application under the Madrid Protocol?
A concise guide to eligibility, benefits, and practical risks

A Japanese trademark registration does not automatically protect your brand overseas. If you want trademark protection abroad, you generally need rights in each target country or region. The Madrid Protocol is a system designed to streamline multi-country trademark filing and management.

1. What is the Madrid System?

The Madrid System allows an applicant to seek trademark protection in multiple countries or regions through one international application filed via WIPO, based on a basic application or registration in Japan or another member jurisdiction. It does not create worldwide trademark rights automatically. Each designated country or region examines the mark under its own trademark law.

2. Who can use it?

When Japan is used as the Office of origin, the system may be available to Japanese nationals, individuals domiciled or residing in Japan, persons with a business establishment in Japan, and Japanese companies such as kabushiki kaisha or godo kaisha.

A Japanese company may be eligible even if its representative is a foreign national. The key point is not the nationality of the representative, but whether the applicant itself has the required connection with Japan.

3. A basic application or registration is required

An international application must be based on a basic trademark application or registration. The international mark must be identical to the basic mark, and the goods and services must fall within the scope of the basic application or registration.

4. Main benefits

• One filing route for multiple countries
• Potentially lower initial costs than separate national filings
• Easier management of renewals and ownership changes
• Possibility of adding countries later by subsequent designation

At the filing stage, the applicant pays WIPO basic fees and fees for designated countries. In some countries, individual fees corresponding to filing and registration fees may be payable together at the outset.

5. Key risks and limitations

• For five years, the international registration depends on the basic mark; this is the central attack risk
• Goods and services cannot always be tailored flexibly for each jurisdiction
• Overly broad specifications may increase the risk of refusals
• If a refusal is issued, local attorney fees may be required
• Some markets, including Taiwan, require separate local filings

6. Taiwan, Hong Kong, and Macao

The Madrid System covers many jurisdictions, but it does not cover every market. For example, trademark protection in Taiwan generally requires a separate local trademark application and cannot be obtained merely by designating a Madrid international registration.

In addition, designating China under the Madrid System does not automatically extend protection to Taiwan, Hong Kong, or Macao, where separate trademark systems apply. When planning an overseas trademark filing strategy, it is important to confirm whether each target market requires a separate filing.

7. When to use Madrid vs. direct filings

Summary

The Madrid System is not a way to obtain trademark rights everywhere automatically. It is a tool to make multi-country filing and management more efficient. The best route depends on the target countries, the mark, the goods and services, the business plan, and likely examination risks.

MEVRO support

MEVRO International Patent Office helps clients compare Madrid filings and direct national filings, design filing strategies, and assess costs and examination risks before filing.

References: WIPO Madrid System; Japan Patent Office Madrid System information. This article is for general information only and does not constitute legal advice.