Navigating the Madrid System and Global Trademark Protections

The Madrid Trademark System

Securing global trademark protection is crucial for establishing strong brand recognition internationally. This post provides an overview of the Madrid Trademark System and how it can be leveraged to improve your global trademark protections, along with examining the alternative procedures required for territories outside the Madrid framework.

The Madrid Trademark System streamlines international trademark registration. Brands can submit one application to the World Intellectual Property Organization (WIPO), targeting several member countries, eliminating the need for individual national applications. It’s a valuable asset for brands seeking widespread protection.

Though the Madrid Trademark System includes countries such as China, there are specific intricacies unique to the Chinese trademark landscape. Given these nuances, we generally advise registering trademarks directly with the China National Intellectual Property Administration (CNIPA) instead of using the Madrid route. See Register Your China Trademarks in China not Madrid.

It’s also important to note that several countries and territories have yet to adopt the Madrid System. These include:

  • Taiwan
  • Hong Kong
  • Macau
  • Some Middle Eastern countries

This means brands seeking protection in these places cannot use the Madrid framework. National applications are required instead.

Though filing national applications in non-Madrid member countries can be challenging, the right approach and resources can simplify the process. In this post, I explain key steps for smoothly obtaining trademark protection when your target country falls outside the Madrid system.

Strategies for Non-Madrid Territories

Here are three strategies for smoothly obtaining trademark registrations in non-Madrid territories:

1. Direct National Applications

Begin your registration by dealing directly with the respective territory’s trademark office, be it the Taiwan Intellectual Property Office (TIPO) or the Hong Kong Trademark Registry.

2. Leverage Priority Claims

Start with an application in your home country (e.g., the US or EU) and subsequently use that as a priority when filing in places like Taiwan or Hong Kong.

3. Collaborate with Local Experts

Working alongside local counsel, experienced in trademark registration within these locations ensures a process tailored to specific regional requirements.

Fortunately, filing national applications in Taiwan is straightforward and even more so in Hong Kong (which is in the process of joining the Madrid System anyway). What’s more, applicants can claim priority based on applications filed in other countries (with some exceptions), provided the priority claim is made within six months of the original filing.

Decoding Priority Claims

The principle of “priority” in trademark applications holds significant weight, especially when dealing with regions outside the Madrid Trademark System. It allows brands to backdate their applications in one country based on their filing date in another, provided the latter claim is made within a six-month window.

For example, if a U.S. brand begins its trademark registration on January 1, 2023, and later applies in Hong Kong by February 1, invoking priority would mean its Hong Kong application date mirrors the initial January 1 date. This mechanism safeguards brands against potential conflicting applications that might arise in that interval.

Another advantage of the priority system is its flexibility; it’s not restricted to just the brand’s home country. A U.S. brand that has an initial filing in China on December 1, 2022, can use this date as the basis for priority when applying in Hong Kong.

However, one should remember that while invoking priority is an option, it might entail additional expenses.

Navigating Madrid and National Trademark Systems

The Madrid Trademark System is an invaluable tool, connecting brands to a vast network of member countries and simplifying international trademark protections. Yet, its reach has boundaries. Key regions like Taiwan, Hong Kong, and certain Middle Eastern countries lie beyond its scope. For these places, a blend of strategies is essential: invoking priority claims, forging alliances with regional experts, and taking the direct route via national applications. To craft a strong global trademark portfolio, brands need to juxtapose the expansive Madrid framework with the intricate dance of national systems, ensuring they are protected no matter where business takes them.