Madrid Protocol – Filing International Trade Marks from Australia

If you’re an Australian business with plans to expand overseas, the Madrid Protocol offers a streamlined and cost-effective way to secure trade mark protection in multiple countries through a single application. This process can open doors to global markets without the red tape traditionally involved in applying country-by-country.

What is the Madrid Protocol?

The Madrid Protocol is an international treaty that allows trade mark owners to seek protection in up to 130+ member countries through a single application filed with a national office, in Australia’s case, IP Australia. Instead of submitting separate trade mark applications to each individual country, you file one international application, in one language, with one set of fees.

It’s a centralized system administered by the World Intellectual Property Organization (WIPO) in Geneva, Switzerland. While WIPO coordinates the process, the final decision to grant trade mark protection still rests with each designated country.

Countries and regions that are part of the Madrid Protocol include:

The Madrid System is a simple and cost-effective way to register and manage trademarks internationally. To seek protection in up to 131 countries, you have to submit a single worldwide trademark application and pay a single set of costs and modify, renew, or grow your global trademark portfolio using a single centralized system.

Who Can Apply?

To file an international application under the Madrid Protocol, you must first have a base application or registration in your home country, this is called the “basic mark.”

In Australia, this means-

• You need a registered trade mark (or a pending application) with IP Australia;
• You must be an Australian citizen or have a real and effective industrial or commercial establishment in Australia.

Once these criteria are met, you’re eligible to file an international application through IP Australia as the “Office of Origin.”

The Application Process

• File through IP Australia– You start the process by submitting an international application based on your Australian trade mark. This is done via IP Australia, which checks for consistency with your basic mark and then forwards your application to WIPO.
• WIPO Formal Examination- WIPO examines your application for administrative compliance, checking details like classifications, format, and fee payment. If everything checks out, your mark is recorded in the International Register and published in the WIPO Gazette.
• National Examination in Designated Countries- Once WIPO processes the application, it notifies the IP offices of the countries you’ve selected (called “designated Contracting Parties”). Each country then examines your application according to their own trade mark laws. If no objections are raised within 12–18 months, your mark is protected in that country.

Five-Year Dependency Rule

One of the most significant features of an international trade mark registration under the Madrid Protocol is the five-year dependency period. For a period of five years from the date of the international application, the international registration is entirely dependent on the survival and scope of the basic trade mark(s) on which it is based. This means that any change affecting the legal status of the basic Australian trade mark during this period will have a direct and irreversible impact on the corresponding international registration.

If the basic trade mark is withdrawn, cancelled, lapses due to non-renewal, restricted (i.e., narrowed in scope of goods/services) then the International Bureau must be notified by IP Australia, and the international registration will be cancelled to the same extent. This applies even if the change is a result of proceedings that commenced within the five-year period but conclude after it.

The consequence is serious: once cancelled, the international registration cannot be revived, even if the basic mark is later restored. However, the holder is given a three-month window to file national trade mark applications in any or all of the previously designated countries. This re-filing process, known as transformation, allows the applicant to retain the original priority date of the cancelled international registration.

If the cancellation of the basic trade mark was in error, IP Australia, as the Office of Origin, has up to 9 months to notify WIPO and reverse the effect on the international registration.

Monitoring the Status of Basic Trade Marks

Given the importance of the basic trade mark to the validity of the international registration, IP Australia is tasked with monitoring changes to all basic trade marks linked to international applications. The International Registration Section of IP Australia conducts reviews at set intervals to detect any amendments or status changes, such as:

• Lapse or expiry of the application or registration
• Restriction or deletion of goods/services
• Non-renewal of the registration
• Withdrawal or cancellation of the basic application or registration

If more than five years have passed since the filing of the international application, and any change in the basic trade mark is not related to an action that began within that five-year window, then no action is taken, and international registration remains unaffected. However, if the change falls within the dependency period or results from proceedings commenced within it, the International bureau is formally notified, and the international registration is cancelled to the corresponding extent. All designated contracting parties are informed by WIPO, and the holder is issued a notice.

Divisional Applications and International Registration

It is possible for an applicant to file a divisional application in Australia for a portion of the goods and/or services covered by the basic trade mark. This may result in the original application splitting into two or more applications, each covering part of the original scope, if:

• A divisional application is filed within five years of the date the international application was lodged, and
• The goods/services in the international registration are now divided across more than one basic application,

Then IP Australia must inform WIPO. The International Bureau updates the International Register to include the new basic trade mark number(s) and specifies which goods/services each one covers. The designated countries are then duly informed. This process does not apply to International Registrations Designating Australia (IRDA). In such cases, a divisional application cannot be filed from the IRDA.

Why Use the Madrid Protocol?

• One Application, Global Reach- Rather than filing separate applications in each country, the Madrid Protocol allows you to manage your international trade mark portfolio from a single system.
• Cost-Efficient and Time-Saving– You save significantly on translation, legal, and administrative costs. Plus, you don’t have to engage separate local attorneys, unless issues arise in a specific country.
• Simplified Management– Any updates such as change of name, ownership, or address can be done centrally through WIPO and will apply to all designated countries.

Things to Keep in Mind while filing

• The “Central Attack” Risk– Your international registration is dependent on your Australian base application or registration for the first five years. If your basic mark is refused, withdrawn, or cancelled during this period, your international registration may be cancelled as well, this is known as a “central attack.”
• Individual Country Requirements– Even though you file through one system, each country examines your application under its local laws. Some countries may raise objections or require further clarification, so you may still need local legal assistance to respond.
• Not All Countries are Members– While over 130 countries participate, some jurisdictions (like some Middle Eastern and South American countries) are not part of the Madrid Protocol. You’ll need to file directly in those regions.

Why Work With a Local IP Firm?

Filing through the Madrid Protocol might seem straightforward, but strategic guidance can make all the difference. At our firm, we help Australian businesses-

• Select the right countries based on market goals;
• Navigate objections from foreign IP offices;
• Respond to office actions efficiently;
• Manage renewals and ownership changes post-registration.

International expansion is an exciting step, don’t let administrative hurdles hold you back. With the right advice and a strong trade mark foundation, your brand can thrive on the global stage.