International Trademark Registration: Madrid or Direct Filing?

Trademark rights stop at the border. A U.S. registration gives you nothing in Turkey, Germany or China, and in most of those countries the first party to file wins regardless of who used the mark first. So international trademark registration is really a series of national decisions: which countries, in what order, and by which route. There are two routes. A Madrid Protocol international application filed through the USPTO, or a direct national application filed with each country’s trademark office through local counsel. The international trademark registration practice at Capitol Law Partners usually ends up recommending a mix, and the reasoning below is how we get there.

Why there is no single international trademark registration

Every country, and a few regional systems such as the European Union Intellectual Property Office, runs its own register under its own law. The Madrid system is a filing and administration mechanism layered on top of those registers, not a substitute for them. Whichever route you take, a French examiner applies French law and a Chinese examiner applies Chinese law to your mark, and a local opponent can challenge it under local rules.

The United States is unusual in granting rights based on use. Abroad, use before filing rarely helps you and may not even be required to register. The consequence for a U.S. business is simple: file in first-to-file countries before you launch there, before you sign a distributor, and before you present at a trade show. Waiting until sales begin is how companies find their own brand registered by a former partner.

Where the Madrid Protocol wins

Madrid is built for breadth. One application, in English, with one fee payment, designates as many member countries as you choose. There is no need to hire local counsel in each country unless an office issues a refusal. Renewal happens once every ten years through WIPO for every designation, and you can add countries later by subsequent designation as the business grows. For a company that wants protection in eight or ten countries where refusals are unlikely, Madrid is almost always the cheaper and simpler route. The mechanics are described step by step in our post on how the Madrid Protocol works.

Where direct national filings win

Four situations push toward direct filings.

The country is not a Madrid member. Several markets in Latin America, the Middle East and Africa are outside the system, and a national filing is the only option there.

You need broader goods descriptions. A Madrid application cannot exceed the goods in your U.S. basic mark, and U.S. practice demands narrow, specific identifications. Many foreign offices accept class headings or far broader wording. A direct filing in those countries can claim more ground than Madrid allows.

Your U.S. basic mark is vulnerable. For five years the Madrid registration depends on the U.S. filing. If the U.S. application faces a likely refusal, or the registration could be attacked, a direct filing in your most important markets removes that single point of failure.

The mark differs by country. If you will use a transliteration in China, a different spelling in Brazil, or a local-language version in Turkey, each needs its own filing anyway, and Madrid’s requirement that the international mark match the basic mark gives you no benefit.

Direct filings also bring local counsel in from the start, which helps in countries where examination practice is idiosyncratic or where you expect opposition from a local competitor.

Paris Convention priority works for both routes

Whichever route you choose, the Paris Convention gives you six months from your first filing anywhere to file in other member countries and claim the original date. A U.S. application filed in January gives you until July to file abroad with January priority, which defeats anyone who filed in those countries during the gap. Build the six-month window into the launch calendar; it is the cheapest protection against a first-to-file loss you will ever have.

A foreign business coming the other way benefits in the same way: a home-country filing can be claimed as the U.S. priority date, and once the home registration issues it can support a U.S. registration without first proving U.S. use.

A practical decision framework

Start with a list of countries in three tiers: where you sell or will sell within two years, where you manufacture or source, and where counterfeiting of your product category is common. The second and third tiers matter because a registration in the manufacturing country lets you stop infringing goods at that country’s border and gives you standing against a factory that starts selling your design under your name.

Then apply the questions above to each country. The usual result is Madrid for the bulk of the list and direct filings for two or three key markets, often China and any non-member, with Paris priority claimed from the U.S. application in all of them. Budget for the Madrid fees and for local counsel in the direct-filing countries, and set aside something for the one or two provisional refusals a multi-country program typically draws. We cover how to rank marks and markets on a limited budget in which trademarks to register first.

Mistakes that cost the most

Relying on a U.S. registration abroad is the first and most expensive. Skipping clearance in the target country is the second: a Madrid designation that collides with a prior local mark is refused in that country, and the fee is spent either way, so a search through our trademark search and clearance process before filing is cheaper than the refusal. Third is forgetting local use requirements; many countries allow cancellation of a registration unused for three or five years, and central renewal through WIPO does not cure that. Companies with filings in more than a handful of countries keep those use deadlines, dependency dates and renewals on one docket through our IP portfolio management service.

If you are deciding how to protect a mark outside the United States, Capitol Law Partners can map your markets to the right route and file through the USPTO or with local counsel, with Paris priority preserved. Schedule a consultation.

This article is for informational purposes only and does not constitute legal advice. No attorney-client relationship is formed by this communication.

Attorney Cagatay Ersoy. Practical strategy for founders, investors, and growing companies.

Need help with this topic? See our international trademark filing and renewal page or schedule a consultation.