Building or expanding a brand internationally requires navigating varying trademark rules, timelines, and filing options. Two key tools—the Paris Convention priority system and the Madrid System—allow applicants to streamline protection across multiple markets.
The Paris Convention lets applicants claim the filing date of their first national application when filing abroad within six months, supporting coordinated global launches. Applicants may file multiple national basics and later select the strongest as the foundation for a Madrid filing.
The Madrid System provides a centralized way to seek protection in many jurisdictions through one application administered by WIPO. Although local counsel may be needed to address refusals, international registrations last ten years and renew directly through WIPO. A Madrid application must be tied to a national basic mark, and each designated country conducts its own examination. If no refusal issues within 12–18 months, protection is granted automatically.
Use of Madrid requires a qualifying connection to a member country, and the international application cannot exceed the scope of the basic mark. Common irregularities involve classification, fees, and data inconsistencies, and WIPO deadlines are strict. For the first five years, the international registration depends on the basic mark and is vulnerable to central attack; transformation can preserve rights if the basic mark is limited or canceled.
While the Madrid System offers broad reach and centralized management, it requires a stable basic mark and rigorous deadline tracking. Best practices include using vetted identifications, monitoring refusals and ownership changes, planning transfers early, and tracking use requirements.
McCoy Russell LLP guides clients through global trademark strategy, managing filings and enforcement in over 130 countries and maintaining an active conflicts practice with more than 250 opposition and cancellation matters worldwide. Please contact us if we can help.