The Madrid System

You can add additional countries or regions to your existing international registration when markets expand or when new countries or regions join the Madrid System. This is known as subsequent designation.

Before applying you need to:

• Have an international registration number assigned to your application by WIPO
• Understand that all designated countries on your international registration will have the same date of renewal — ten years from the date of the original filing.

Filing a subsequent designation

A request for subsequent designation can be made directly to WIPO online using their E-subsequent designation.

Once you have submitted the form, you'll receive a confirmation on screen and by email.

Your international trade mark is usually based on an Australian application or registration. This is called the basic trade mark.

Making specific changes to your basic trade mark within the first five years of lodgement in the Madrid System can cause your international trade mark to cease.

If an action has started within the first five years that results in basic trade mark IP rights ceasing, for example non-use or court action, we'll still notify WIPO even if the action finishes after the five-year period has lapsed.

When WIPO receives this notification, it will make the same changes to your international registration and notify the holder as well as the relevant designated countries or regions. 

You may be able to retain your rights in individual countries or regions by requesting your international registration be converted to a national application. This is called a transformation request. 

This involves:

• Filing a request to transform with the designated office within three months of WIPO recording the cancellation
• Your filing date changing to the date of international registration.

You'll need to contact the designated country or regional office for information how the process works in the country. 

I need to make a change to the representation of my Australian trade mark(s) that is allowable. How will that affect my registration in the Madrid System?

Once you have a Madrid System registration, changes to the representation of basic mark(s) that are allowable under national or regional laws won't affect the Madrid System registration. WIPO understand that these changes may occur. The trade mark representation of your Madrid System registration won't change to match the national or regional trade mark.

Can I have a different owner(s) for my Madrid System application than for my Australian trade mark?

No. The ownership details must be exactly the same when filing. All owners of the Australian mark must be recorded exactly as they are on the Australian application (spelling, capital letters, full name, etc). You may wish to update ownership of the Australian trade mark before filing your Madrid System application.

The six month deadline to claim priority from the filing of the Australian trade mark has passed. Can I still file my Madrid System application?

Yes. A Madrid System application can be filed at any time after the Australian trade mark/s it's based on.

I've received my registration certificate from WIPO. Does that mean my trade mark is registered now in the countries I selected?

When WIPO register an application it means they have approved it, entered the details into the register, and passed the application on to the nominated countries. It's up to the IP Offices in those countries to grant or refuse protection.

I've received a provisional refusal from a country. What do I do?

A provisional refusal is similar to receiving an adverse examination report on your Australian trade mark. The notification will include:

• Reasons for the refusal
• Any further steps that are required (including the time limit to respond)
• Review or appeal options
• Whether or not you must appoint a local agent to assist you.

Read the notification carefully. Depending on the issues raised and the country involved you may need to respond directly to their Office, or by filing a response via WIPO (such as a limitation of the list of goods and/or services).

How do I respond to an unable to certify or irregularity notice I have received?

You'll need to type, or attach, your response to the issues raised in the Madrid application form itself. We'll send you a notice with instructions on how to respond. Your response will be reviewed by us before being forwarded to WIPO. Don't send your response directly to WIPO yourself.

How do I make the choice between filing using the Madrid system and filing directly?

You may want to file directly if:

• That country isn't covered by the Madrid System
• You only want protection in one other country
• The trade mark you want to use internationally is different to the one you use in Australia. For example, you might want to file a translation or transliteration, or choose a trade mark that's more culturally suited to the international market. It's possible to file for these different trade marks through the Madrid System but because you'd need to file in Australia first, a direct application may be more suitable
• You plan on trading in different goods and services in different countries. This is important if the goods or services you want to protect overseas aren't covered by the claims made in your Australian application.

The best option will depend on your unique needs and may include the option to file using the Madrid System as well as directly. A trade mark attorney who specialises in your country of interest can help you make this decision.

Engage an IP professional

How do I find goods and services that will be acceptable across countries or offices?

Acceptable claims for goods and services vary across the world. Consider consulting the Madrid goods and services manager which can tell you what claims are acceptable to WIPO and other countries and offices.

Madrid goods and services tool