Introduction
Any growing company naturally progresses in its expansion by pursuing business ventures outside of its home country. Once your business starts considering commerce across borders—or, perhaps, has already started investing in international pursuits—it’s time to consider what protections are in place for the business name and branding elements that work so diligently for you around the world. The World Intellectual Property Organization (WIPO) runs the Madrid System, which provides a practical way to register and manage trademarks globally. But what are the Madrid System costs and fees associated with this system? This guide provides a detailed breakdown of the costs and fees, including basic fees, additional fees, and how to calculate them.
Member states of WIPO
The member states of the World Intellectual Property Organization (WIPO) are the WIPO countries. However, not all of the WIPO’s member states signed the Madrid Agreement. It is important to note that not all WIPO member states are party to the Madrid Agreement or its protocol. Therefore, if you want to extend your trademark protection internationally, countries that are part of the Madrid System are the only ones where you can do so.
The Madrid Agreement is currently being signed by 130 countries. These countries account for 80% of the world’s GDP. Any member of the Madrid System can extend their trademark. The company charges a standard fee of 100 CHF for each additional country, but some countries have special customs fees.
Click Here for AI Startup Valuation Guide.
Madrid Protocol countries
Applying for a trademark in multiple countries at the same time through the Madrid Protocol is one of the easiest ways. This treaty enables applicants to submit one application to multiple member countries simultaneously, eliminating the need for multiple versions of the application or the provision of different language translations.
The vast majority of nations in the world are part of the Madrid Protocol, and the Madrid Protocol trademark cost makes it the most streamlined filing option for a business pursuing business ventures abroad.
Click Here for AI Startup Valuation Guide.
Basic Fees of Madrid Trademark System
The Madrid system fees that you must pay for an application for international registration under the Madrid System include:
Madrid Protocol fee
$740 (changes slightly due to exchange rates)
Individual country fees:
Each country charges a filing fee ranging from $100 to $850. These fees vary country by country.
Legal Fees
$950+ (legal fees typically depend on exactly how many countries you file in)
As you can see, you need to consider three “fee buckets”. The first fee is for just the Madrid Protocol system. Individual countries themselves charge the fees. Finally, the preparation, filing, and tracking of the application incur legal fees.
Click Here for AI Startup Valuation Guide.
Additional Fees and Savings
Additional Madrid system fees may apply for extra classes, color claims, or other specific requests. Some clients can obtain cost savings of more than 40% compared to national filings, making the Madrid System an attractive option.
Click Here for AI Startup Valuation Guide.
Calculating the Costs of Madrid Trademark Filing
Calculating the costs involves considering various factors such as the number of countries designated, the number of classes, and the type of mark. Tools like WIPO’s Fee Calculator can assist in estimating the total fees.
Compared to direct filing via local attorneys, the Madrid System fees often prove more economical, especially for multiple countries. Direct filing costs typically range from $1500-$2500 per country.
Click Here for AI Startup Valuation Guide.
Where to submit fees
In general, WIPO should receive all international trademark registration fees. However, certain Contracting Parties allow you to submit application fees directly to the Office of Origin; the Office will then forward the fees to WIPO.
Click Here for AI Startup Valuation Guide.
Payment methods for Madrid System trademark filing
You can submit your Madrid system fees to WIPO in four ways: through a Current Account at WIPO, by using a credit card (in certain cases), by making a bank transfer, or by making a postal transfer (within Europe only).
Tip: To make online and credit card payments, you must provide your 9 to 10-digit WIPO reference number. You can find this reference number in your online transactions and acknowledgment emails, and we will send you any irregularity notice. Are you unable to find it? Search for your international registration by using “Monitor Your Registration” under eMadrid. You will find the number in the “Real-time Status” tab.
Click Here for AI Startup Valuation Guide.
Tips for registering a trademark with the WIPO
Trademark Availability Check and Local Regulations
Please run a search to determine if your mark is available in a specific country. Limiting your list of goods or services makes sense if there is a conflicting mark. Avoid hiring local attorneys to respond to the objection.
Declaration of Use and Local Attorney for WIPO Registration
You should check local regulations. Remember that if you register your mark in the US through the WIPO, you must submit a declaration of use every five years, and you will need a local attorney for this.
Handling Objections and Local Attorney Estimates
Ahead, think. If any country refuses your mark, you will need to hire a local attorney to fix the application.
Customizing WIPO Classes for Your Trademark
You don’t have to extend all ten classes through the WIPO’s Madrid System if your local mark is in 10 classes. You can restrict the number of classes and suggest various product or service descriptions for various classifications.
Tracking WIPO Correspondence and Deadlines
You should keep track of any correspondence you receive from WIPO. Important deadlines will be contained in some of them.
Importance of a Statement of Grant of Protection
Receiving a registration certificate 2-3 weeks after filing your mark does not imply that all countries protect your trademark. You need to wait for a STATEMENT OF GRANT OF PROTECTION. Only 18 months after the filing date, some countries will issue it.
Varying Levels of Protection in WIPO Countries
The WIPO’s Madrid System does not grant the same force to a trademark in every WIPO country. The US, the EU countries, Canada, etc. will provide the same level of protection to it as a national mark. However, some other countries, such as China and Vietnam, will require you to obtain a national confirmation of registration to enforce your trademark. The cost will be around US$200.
Considerations for Central Asian Markets
Some countries, such as Tajikistan, provide very limited protection for a WIPO mark. If your business considers the Central Asian countries important, you should consider filing national applications instead of the WIPO trademarks.
Click Here for AI Startup Valuation Guide.
Madrid Application Fee Change
WIPO may revise or update the fee structure established for the Madrid application, leading to changes in the application fees over time. Regularly checking the WIPO website or official publications is important to stay informed about any Madrid system fee changes. WIPO ensures accurate payment of fees when filing Madrid Protocol applications by providing detailed information on fee schedules, including any modifications.
Click Here for AI Startup Valuation Guide.
Our team of advanced patent attorneys assists clients with patent searches, drafting patent applications, and patent (intellectual property) agreements, including licensing and non-disclosure agreements.
Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter.
Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech).
Regularly invited to speak at international & national platforms (conferences, TV channels, seminars, corporate trainings, government workshops) on technology, patents, business strategy, legal developments, leadership & management.
Working closely with patent attorneys along with international law firms with significant experience with lawyers in Asia Pacific providing services to clients in US and Europe. Flagship services include international patent and trademark filings, patent services in India and global patent consulting services.
Global Blockchain Lawyers (www.GlobalBlockchainLawyers.com) is a digital platform to discuss legal issues, latest technology and legal developments, and applicable laws in the dynamic field of Digital Currency, blockchain, Bitcoin, Cryptocurrency and raising capital through the sale of tokens or coins (ICO or Initial Coin Offerings).
Blockchain ecosystem in India is evolving at a rapid pace and a proactive legal approach is required by blockchain lawyers in India to understand the complex nature of applicable laws and regulations.
