Extending your trademark abroad: the Madrid System

A trademark is protected only where it is registered. If you sell in Germany, France or the United States with a trademark filed only in Switzerland, you are unprotected abroad: anyone can register it and block your entry into that market. The instrument for protecting yourself in many countries with a single procedure is the Madrid System, administered by WIPO (World Intellectual Property Organization) in Geneva.

What the Madrid System is

The Madrid System is a centralised mechanism that allows, starting from a basic trademark — a national application or registration — protection to be obtained in over 130 countries with a single international application, in one language and with a single payment in Swiss francs.

It does not create a single “worldwide trademark”: it generates a bundle of national registrations administered centrally. In each designated country the trademark produces the same effects as a local filing, but management (renewals, changes of ownership, adding countries) goes through a single register.

How it works in practice

1. Swiss basic trademark: you start from an application or registration with the IPI (Swiss Federal Institute of Intellectual Property). The holder must have a connection with Switzerland (nationality, domicile or business).
2. International application: it is filed through the IPI, which transmits it to WIPO. You indicate the designated countries where you want protection and the classes of goods/services (Nice Classification).
3. WIPO formal examination: it checks the requirements and enters the trademark in the International Register.
4. National examination: each designated office examines the trademark according to its own law and generally has 12 or 18 months to refuse protection. In the absence of a refusal, the trademark is protected in that country.

The priority window: 6 months

Those who have already filed in Switzerland have a priority right of 6 months: by extending the trademark abroad within this deadline, the foreign applications count as if they had been filed on the same day as the Swiss one. It is a window to exploit: whoever lets it expire risks that a third party files the same sign in a key market in the meantime.

Costs and duration

• Costs depend on the number of countries and classes: they consist of a WIPO basic fee, fees for each designated country and a supplement per class beyond the first ones. Concentrating the choice on the markets that really matter avoids paying for protection where it is not needed.
• Registration lasts 10 years and is indefinitely renewable, with a single centralised renewal for all countries.
• Adding countries at a later time (subsequent designation) is always possible, as the company enters new markets.

The pitfall of central attack

The most delicate point of the Madrid System: for the first 5 years the international registration depends on the Swiss basic trademark. If during this period the basic trademark is refused, withdrawn or cancelled, the international registration in all countries falls too — this is the so-called central attack.

There is a remedy, transformation, which allows the designations to be converted into national applications while preserving the date, but it is a costly procedure. The practical lesson: make sure the Swiss basic trademark is solid before building an international extension on top of it.

Madrid or direct national filings?

The Madrid System is worthwhile when you are targeting several countries and want centralised management. For a few specific markets, or for countries not party to the system, a direct national filing may be preferable or, for the European Union, the EU trademark (EUIPO), which with a single registration covers all member states and can itself be designated via Madrid.

Frequent mistakes

• Registering only in Switzerland and discovering too late that a third party has taken the trademark in the market of expansion.
• Letting the 6-month priority expire, losing the anchor to the Swiss date.
• Building the extension on a weak basic trademark, exposed to central attack.
• Designating too many countries out of caution, multiplying costs without a real commercial strategy.

How SIH ONE supports you

The Tax & Legal division plans the international trademark protection strategy with founders and SMEs — checking the solidity of the basic trademark, choosing countries and classes, managing the application via the IPI and the renewals — coordinating protection with commercial development abroad. Before opening a new market, we secure your trademark where it counts.