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INTERNATIONAL TRADEMARK

🌐 Madrid Protocol International Trademark Application

File a trademark application in over 130 countries worldwide through a single procedure—no local agent required, cost savings, and fast registration

🌏 Covers over 130 countries 💰 Approximately 60% cost savings compared to direct filing ⏱ Examination results within 18 months

What Is a Madrid Protocol International Trademark Application?

A Madrid Protocol international trademark application (also known as a Madrid Protocol international trademark registration application) is an international system that allows you to file a trademark application in multiple countries through a single procedure via the WIPO (World Intellectual Property Organization) International Bureau.By filing an international registration application with WIPO via the Japan Patent Office and “designating” the desired contracting states, you can achieve the same effect as if you had filed individual applications in each country.

📌 Basic Structure of the Madrid Protocol

  • A single application can designate over 130 countries worldwide
  • The application process is completed in a single language (English, French, or Spanish)
  • A single fee structure (base fee + country-specific surcharges)
  • No local agent required in principle (except in countries where a notice of refusal has been received)
  • International registrations are renewed in a single batch for all designated countries through WIPO (every 10 years)

Since international applications are filed based on a domestic basic application (a trademark registration application or trademark registration with the Japan Patent Office), this is the most cost-effective global trademark protection scheme for businesses holding Japanese trademarks.

⚠️ Note: Taiwan is excluded. Since Taiwan is not currently a contracting party to the Protocol to the Madrid Agreement, it cannot be designated in a Madrid Protocol application. A direct application to Taiwan is required.

5 Benefits of Filing a MADPRO Application

💰 1. Cost Savings

Since local agent fees are generally not required, costs can be reduced by approximately 50–70% compared to direct filing. The greater the number of countries included in the application, the greater the cost savings.

⚡ 2. Simplified Procedures

The process is completed with a single language, a single application form, and a single fee payment. There is no need to prepare, translate, or notarize separate application forms for each country.

🚀 3. Faster Granting

If the designated countries do not issue grounds for refusal, protection takes effect within 12 to 18 months from the international registration date.

🔄 4. Centralized Renewal and Management

Renewal every 10 years is handled entirely through WIPO. Subsequent designations (adding countries later), changes of ownership, and address changes are also handled centrally.

🌍 5. Scalability

You can add designated countries later (post-designation). Flexibly expand your protection scope to match the pace of your business’s overseas expansion.

⚠️ Disadvantages and Points to Note

  • Central Attack: If the basic trademark expires within 5 years of the international registration, protection in all designated countries will also expire accordingly.
  • Countries Requiring Proof of Use: In countries such as the United States, the Philippines, and Cambodia, separate proof of use must be submitted.
  • Local attorney required upon receipt of a notice of refusal: Costs will be incurred for appointing an attorney and responding in the country where the notice was received
  • Limited flexibility regarding classes and designated goods/services: Designations cannot exceed the scope of the base trademark

Comparison with Direct Filing

Item Madrid Protocol International Trademark Application Direct Application
Preparation of the Application One copy in one language (e.g., English) One copy in the language of each country
Local Agent Generally not required (only upon receipt of a rejection notice) Required for each country
Fees Base fee + country-specific surcharge Official fees + agent fees for each country
Processing Time Protection confirmed in 12 to 18 months 6 months to 3 years, depending on the country
Linkage with the base trademark Linked for 5 years (Central Attack) Independent (no linkage)
Designated Goods/Services Within the scope of the basic trademark Freely definable by country
Renewal Procedures WIPO Centralized (every 10 years) Renewal by country
Restrictions on Covered Countries Contracting States only (Taiwan, etc., are not eligible) Worldwide (including non-contracting states)
Recommended Scenarios Applications in 3 or more countries / Cost-conscious 1–2 countries / Detailed specifications required

📊 Practical Guidelines: The Madrid System offers overwhelming advantages when filing in three or more countries. For one to two countries, direct filing should also be considered. Our firm will provide a proposal comparing both options during the application strategy planning phase.

List of Contracting Parties to the Madrid Protocol (Over 130 Countries)

As of 2026, more than 130 countries worldwide are parties to the Protocol to the Madrid Agreement. The number of member countries is increasing year by year, making it increasingly easier to file foreign trademark applications.

🌏 Asia (16 countries)

Japan, China (excluding Hong Kong and Macau), South Korea, and Taiwan are excluded; Singapore, Thailand, Malaysia, Indonesia, the Philippines, Vietnam, Cambodia, Laos, Brunei, Mongolia, Bhutan, and North Korea

🌍 Europe (45 countries)

European Union (EUTM), United Kingdom (including the Isle of Man), Germany, France, Italy, Spain, the Netherlands, Belgium, Switzerland, Norway, Sweden, Denmark, Finland, Poland, the Czech Republic, Austria, Ireland, Portugal, Russia, and others

🌎 North, Central, and South America (10 countries)

United States, Canada, Mexico, Brazil, Colombia, Cuba, Chile, Trinidad and Tobago, Jamaica, Peru

🌏 Middle East (10 countries)

Israel, UAE, Turkey, Saudi Arabia, Egypt, Iran, Syria, Oman, Bahrain, Afghanistan

🌍 Africa (25 countries)

Algeria, Morocco, Tunisia, Kenya, Ghana, Nigeria, Egypt, South Africa, Zimbabwe, Zambia, Mozambique, and others (including member states of OAPI: the African Intellectual Property Organization)

🌏 Oceania (2 countries)

Australia, New Zealand (excluding the Tokelau Islands), Samoa

📌 Latest Membership Trends: New member states since 2024 include Malaysia, Côte d’Ivoire, Chile, Brazil, and the UAE, with emerging markets in particular expanding. Please check the WIPO official website for the latest list of contracting states.

Procedural Flow for MAD Pro Applications

1

Verification of the Domestic Base Trademark

An international application is filed based on a trademark registration application or a registered trademark with the Japan Patent Office.

2

Consideration of Designated Countries and Designated Goods/Services

Select the countries where you plan to conduct business and determine the designated goods and services based on each country’s registration requirements.

3

Filing an International Registration Application with the Japan Patent Office

Prepare the application in English or another language and submit it to the WIPO International Bureau via the Japan Patent Office.

4

International registration by WIPO (approximately 2–4 months)

Following a formal examination, the application is entered into the International Register. Notification is sent to the authorities of each designated country, and the starting date of the protection period (10 years) is determined.

5

Substantive Examination in Each Designated Country (12–18 months)

The authorities in each designated country conduct an examination. If there are no grounds for refusal, protection is granted. If a notice of refusal is issued, a response is filed through a local agent.

6

Registration and Confirmation of Protection

Protection is confirmed in each designated country. Protection can be maintained indefinitely through renewal procedures every 10 years.

Estimated Application Fees

The cost of a Madrid Protocol application consists of WIPO fees (base fee + per-country surcharge) and our firm’s agency fees.

Fee Items Estimated Amount Remarks
WIPO Base Fee 653 / 903 CHF 653 CHF for black-and-white trademarks, 903 CHF for color trademarks (standard 1 class)
Country-Specific Additional Fees 100–400 CHF per country China and the U.S. have high fees (e.g., 460 CHF per class in the U.S.)
Japan Patent Office domestic fees 9,000 yen Since the international registration application is filed through the national office
Our Firm’s Agency Fees 150,000 yen and up (application representation) Varies depending on the number of designated countries and classes. Free estimate available

💡 Up to 1/2 covered by the INPIT Foreign Application Grant: Small and medium-sized enterprises (SMEs), startups, and other eligible entities can use the INPIT Foreign Application Grant to cover up to 1/2 of the Madrid Protocol application fees (annual cap of 3 million yen).Our firm’s application handling fee is a flat rate of 50,000 yen (excluding tax), and we have a 100% success rate in securing grants in previous rounds.

Countries Requiring a Declaration of Use

In some countries, it is mandatory to submit a written declaration (Declaration of Use) proving that the trademark is actually being used after registration. Failure to submit this declaration may result in the registration being revoked; therefore, it is important to manage your usage plans and submission schedule from the time of filing.

Countries and Regions Declaration of Use Submission Deadline and Notes
🇺🇸 United States Required 5–6 years after registration (Section 71 Affidavit), then every 10 years
🇵🇭 Philippines Required Within 3 years of filing; 5 years and 10 years after registration
🇰🇭 Cambodia Required Within one year starting from the fifth year after registration
🇯🇵 Japan Not required Subject to cancellation proceedings for non-use (three consecutive years of non-use)
🇨🇳 China Not required Subject to cancellation for non-use (three consecutive years of non-use)
🇪🇺 EU (EUIPO) Not required Subject to cancellation for non-use (after 5 years from registration)
🇰🇷 South Korea Not applicable Subject to cancellation for non-use
🇨🇳🇲🇴🇭🇰 Hong Kong and Taiwan Not subject to the Madrid Protocol Direct filing required

⚠️ Special Notes for the U.S.: In the U.S., protection is not secured solely through the international registration procedure; submission of a declaration of use is mandatory. It is necessary to plan ahead from the application stage to manage submission deadlines and collect evidence of use.

Points to Note for Major Designated Countries

🇺🇸 United States (USPTO)

  • As a use-based country, submission of a declaration of use is mandatory (§71)
  • The description of goods and services is strictly interpreted, requiring a detailed specification in the “Identification of Goods/Services” section
  • Appoint a USPC-certified attorney to respond to Office Actions
  • Since rejections under Section 2(d) (likelihood of confusion) occur frequently, a preliminary clearance search is recommended

🇨🇳 China (CNIPA)

  • Separate, direct applications are required for Hong Kong and Macau
  • Bad-faith trademark squatting remains a challenge
  • Since examination is based on subclasses, the selection of designated goods is critical
  • The 2024 amendments strengthen ex officio invalidation proceedings

🇪🇺 European Union (EUIPO)

  • A single designation covers all 27 member states (after Brexit, the UK must be designated separately)
  • Absolute grounds for refusal (lack of distinctiveness, descriptiveness) are strictly enforced
  • No “Letter of Consent” system (risk of confusion cannot be resolved by agreement)
  • Interpretation of class headings follows a strict literal approach (IP Translator case)

🇰🇷 South Korea (KIPO)

  • Many rejections under Article 32 of the Trademark Act (prior similar trademarks)
  • The Letter of Consent system will be introduced with the 2024 amendment
  • Even through the Madrid System, designated goods and services can be amended to conform to South Korean practices

Common Grounds for Rejection and How to Address Them

1. Lack of Distinctiveness

Terms that generally describe goods or services, as well as indications of origin, are not registrable. Since judgments vary significantly depending on each country’s language and cultural background, responses must be tailored to each country.

2. Likelihood of Confusion with Prior Similar Trademarks

This is the most common ground for refusal, where similarity to a prior registered trademark is cited. We address this through prior clearance searches, obtaining a Letter of Consent, or narrowing the scope of the designated goods.

3. Insufficient Specification of Goods and Services

The requirements for specifying goods and services are particularly strict in the United States and China. If the description of the basic trademark is too broad, limitations will be required in each country.

4. Violation of Public Order and Morals; Use of Religious Terms, Country Names, etc.

In some countries in the Middle East and Asia, there are strict restrictions on the use of religious terms, country names, and terms related to the royal family.

Latest Trends for 2024–2026

📅 2024 Amendment: Introduction of the “Letter of Consent” in Japan

Amendments to the Japanese Trademark Act now allow for the use of a “Letter of Consent” to address refusals based on likelihood of confusion (Article 4, Paragraph 1, Item 11). This can also be utilized for Japanese designations via the Madrid System.

🌏 2024–2026: Expansion of New Member Countries

Malaysia, Côte d’Ivoire, Chile, Brazil, the UAE, and others have newly joined. Madrid Protocol applications to emerging markets have become a viable option.

⚙️ Enhancements to the WIPO eMadrid System

WIPO’s online filing platform (eMadrid) has been enhanced, making application preparation, post-filing designations, and renewals more efficient. Our firm offers expedited filing services utilizing eMadrid.

Frequently Asked Questions (FAQ)

Q : In how many countries is a Madrid Protocol application advantageous?
Generally, a Madrid Protocol application offers overwhelming cost advantages when designating three or more countries. For one or two countries, a cost comparison with direct filing is necessary. Our firm will provide a proposal comparing both options during the application strategy planning stage.
Q : What is a “central attack”?
This is a mechanism whereby, if the basic trademark (filed or registered in Japan) is definitively rejected, canceled, or invalidated within five years of the international registration, protection in all designated countries is automatically revoked as well. After five years have passed, the international registration becomes independent of the basic trademark. To mitigate this risk, it is crucial to ensure the stability of the basic trademark’s rights.
Q: Is it possible to make a subsequent designation (add designated countries later)?
Yes, it is possible. Even after an international registration has been filed, “subsequent designation”—the addition of new member countries—is permitted. This allows you to flexibly expand your scope of protection in line with the pace of your business’s overseas expansion.
Q : What happens if I forget to file the Declaration of Use (§71) for the U.S. designation?
If the filing deadline is missed, protection for the U.S. portion will be canceled. Our firm manages these deadlines on your behalf and sends reminders 3 to 6 months before the filing deadline.
Q : If a notice of grounds for refusal is issued in a designated country, how much will it cost?
Appointing a local agent is mandatory to respond to a notice of refusal. The cost is generally estimated to be between 150,000 and 400,000 yen per case (depending on the country and the type of refusal grounds). We minimize the risk of refusal through a preliminary clearance search.
Q: Can I use the INPIT subsidy to cover the costs of a Madrid Protocol application?
Yes, you can. The INPIT Foreign Application Subsidy covers Madrid Protocol applications as well, and you can receive a subsidy of up to half the cost (with an annual cap of 3 million yen). Our firm’s application filing service costs a flat fee of 50,000 yen (excluding tax), and our approval rate has been 100% in the past.
Q Can I file Madrid Protocol applications for Taiwan, Hong Kong, and Macau?
No, you cannot file under the Madrid Protocol in any of these regions. Taiwan is not a party to the Madrid Protocol, and Hong Kong and Macau are excluded even when China is designated. You must file directly with these regions. Our firm provides one-stop service for direct filings in Taiwan, Hong Kong, and Macau.
Q How long is an international registration valid?
An international registration is valid for 10 years and can be maintained indefinitely through renewal every 10 years. The renewal process is extremely efficient, as all designated countries can be renewed at once through a single application filed with WIPO. Our firm also manages renewal deadlines on your behalf.
Q : Can foreign companies without a basic trademark in Japan file a Madrid Protocol application?
A Madrid Protocol applications require a basic application or registration in the base country (the applicant’s home country). For foreign companies, the international application is filed through the patent office in their home country. Our firm has extensive experience handling “inbound” designations for foreign companies in Japan and can provide services in English.
Q : Do you offer free consultations?
Yes, the initial consultation is free. Please feel free to contact us by phone (+81-6-7777-1884), email, or through our contact form. We will provide a proposal for your Madrid Protocol application strategy and a quote at no charge.

Free Consultation & Inquiries

Free Consultation on Madrid Protocol International Trademark Applications

Our firm provides one-stop support, from formulating a Madrid Protocol application strategy to international registration, responding to requests in each designated country, and managing renewals. For small and medium-sized enterprises (SMEs) and startups, we also offer assistance with applying for the INPIT Foreign Application Subsidy.

If you have any questions, please feel free to contact us.

Business Hours: Weekdays 9:00 AM – 8:00 PM

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