How to file an international trademark ?

Protecting a trademark internationally is essential in today’s globalized marketplace. To obtain extended trademark protection, several options are available: country-by-country filing, registration of a European Union trademark (EuiPo) or other regional groupings, or filing an international trademark (WIPO). Filing an international trademark involves a single application form, but protection or refusal occurs individually for each designated country.

Understanding international trademark filing

The Madrid system: legal framework

The Madrid System (WIPO) enables trademark protection across numerous countries through an international registration whose effects extend to each designated country. It is important to note that an international trademark does not constitute a unitary right but rather a single filing mechanism.

The Madrid System comprises two international treaties:

• Madrid Agreement (1891)
• Madrid Protocol (1989)

As of October 2025, the Madrid Protocol has 115 members across five continents.

Key advantages of international filing

The Madrid System’s primary advantage lies in its centralized approach: applicants need only submit a single application to a common office, the World Intellectual Property Organization (WIPO), without drafting it in multiple languages.

This centralized filing eliminates the need for country-by-country national trademark applications. However, the international trademark does not create a unitary right. Instead, the applicant obtains as many individual national rights as there are countries included in the application.

Consequently, if prior rights exist in a particular country, the application will be refused only for that specific country, not globally. This territorial approach provides flexibility while maintaining comprehensive protection.

In certain situations, filing a national trademark directly may prove more strategic. For example, protecting a trademark in the United States requires careful consideration of the optimal filing strategy, as direct USPTO filing may offer advantages over the Madrid Protocol route in specific circumstances.

Cost structure and fees calculator

International trademark filing fees are consolidated into a single payment, making this option more economically advantageous beyond a certain number of countries. The fee structure includes:

• A basic fee of 653 Swiss francs (or 903 Swiss francs for color marks) ;
• Individual fees for each designated country, which vary by jurisdiction ;
• Additional fees based on the number of classes of goods and services

WIPO provides an online fee calculator to determine the total cost of an international filing based on selected countries and classes.

Note: A 90% fee reduction applies for applications filed through the IP Office of a least-developed country.

Step-by-Step filing process

Preliminary considerations: prior anteriority search

Before initiating an international trademark application, conducting a comprehensive prior art search is strongly recommended to evaluate potential obstacles to international protection. This search should cover identical or similar trademarks in one or more target countries and helps assess the likelihood of successful registration.

Step 1: obtain a basic national application or registration

Filing a national trademark application or obtaining a registration with the national office is mandatory before filing an international trademark. This basic application or registration serves two critical functions:

• Establishes priority rights to protect the trademark ;
• Provides necessary time to develop a coherent international protection strategy.

The international extension must be identical to the basic national trademark or may cover a narrower list of goods and services. No modifications to the sign or additions of new goods and services are permitted.

Step 2: select the appropriate applicant

An international registration application may only be filed by an individual or legal entity that has a connection to a Contracting Party through establishment, domicile, or nationality. The connection must be established through one of the following:

• A real and effective industrial or commercial establishment in a member country ; 
• Domicile in a member country ; 
• Nationality of a member country.

When choosing the applicant entity (natural person or subsidiary), consideration should be given to corporate structure, tax implications, and long-term business strategy.

International applications may be filed in French, English, or Spanish, regardless of which treaty governs the application, unless the office of origin requires use of one or two specific languages.

Step 3: designate target countries

Not all countries are members of the Madrid System. Currently, 115 members represent 131 contracting parties, providing global coverage across five continents. The application must designate one or more contracting parties where protection is sought.

Important considerations when selecting countries:

• Current and projected market presence ; 
• Manufacturing and distribution locations ; 
• Potential counterfeiting or infringement risks ; 
• Regional intellectual property strategies (e.g., European Union as a single designation).

Registration timeline and examination

WIPO formal examination

After verification by the office of origin, the application is transmitted to the International Bureau, which conducts a formal examination. This examination covers only formal requirements, including classification and completeness of the list of goods or services.

Publication of the trademark

If no irregularities are identified, the International Bureau:

• Records the trademark in the International Register ;
• Publishes the international registration in the WIPO Gazette of International Marks ;
• Notifies each designated contracting party.

The WIPO Gazette is available electronically and provides transparency for trademark monitoring and opposition purposes.

National Office Examination

Following international registration, the national office of each designated party issues either a grant or refusal of protection on its territory, after examining compliance with national legislation.

Critical Timeline: Any refusal, with indication of grounds, must be communicated to the International Bureau within 18 months from the date of notification (12 months under the Madrid Agreement). This strict deadline ensures uniform registration timing and a relatively rapid registration process.

In case of refusal, the applicant has access to remedies available in the concerned country, including administrative appeals, oppositions, and judicial review procedures under national law.

Protection scope and duration

Territorial effect

The international registration produces, in each designated contracting party, from the date of registration, the same effects as a national trademark would produce.

For example, a trademark designating France benefits from 10-year protection, renewable indefinitely upon payment of applicable fees. This creates enforceable rights equivalent to those obtained through direct national filing.

The five-year dependency period (central attack)

During the first five years, the international trademark remains dependent on the basic national trademark. If the basic trademark is canceled, annulled, or lapses for any reason during this period, the international trademark automatically falls.

Once this five-year period expires, the international registration becomes independent of the basic trademark and cannot be challenged based on the status of the basic mark.

If central attack occurs, the Madrid Protocol provides a safety mechanism: the trademark owner may transform the international registration into national applications in each designated country, preserving the original filing date and priority. However, this requires payment of national filing fees in each country, eliminating the cost advantage of the Madrid System.

Renewal and maintenance

International registrations are valid for 10 years from the registration date and may be renewed for successive 10-year periods. Renewal is processed centrally through WIPO, eliminating the need for multiple national renewals and significantly reducing administrative costs.

Changes in ownership, name, or address can also be recorded centrally through the International Bureau, which then notifies all designated countries. This centralized management system represents a substantial advantage over maintaining multiple national registrations.

Why engage an Intellectual Property attorney (IP attorney)

Engaging an intellectual property attorney ensures optimal trademark protection within a coherent strategy for brand protection and enforcement.

Beyond being a legal requirement in certain countries, legal counsel provides tailored advice at each stage:

• Strategic applicant selection: determining whether to file as an individual, parent company, or subsidiary based on corporate structure and tax considerations. 
• Classification strategy: identifying appropriate classes and drafting acceptable specifications under the Nice Classification system.
• Country selection: analyzing market presence, distribution channels, and infringement risks to optimize territorial coverage.
• Office action response: preparing substantive responses to objections raised by national offices.
• Monitoring and enforcement: implementing trademark watch services and developing enforcement strategies.
• Portfolio management: coordinating renewals, assignments, and licensing across jurisdictions.

Furthermore, an intellectual property law firm conducts all preliminary verifications to ensure application acceptability, analyzing the distinctiveness of the chosen sign and conducting comprehensive prior art searches before proceeding with filing.