International Trademark Registration: A Guide to the Madrid Protocol

What is the Madrid Protocol?

The Madrid Protocol is an international system that makes it easier to protect trademarks in more than one country. It is administered by the World Intellectual Property Organization (WIPO). Instead of filing a separate trademark application in each country, you can request protection in the member countries of your choice through a single international application, in a single language and with a single fee structure.

Let us state an important point up front: the Madrid system does not grant a "world trademark." Once the application is filed, each country examines the trademark under its own legislation and issues a decision to accept or refuse it. In other words, the system combines the filing and management process; it does not remove the countries' authority to examine.

What is the prerequisite for an international trademark application?

To file through Madrid, you must have a basic application or basic registration in Türkiye. In other words, you first take your trademark to the application stage in Türkiye; the international application is based on this basic mark. The list of goods and services of the basic mark limits the scope of the international application: a broader list than that of the basic mark cannot be requested in the international application.

For this reason, it makes sense to build the international strategy while preparing the application in Türkiye. Class and list decisions should be considered together with the plan for abroad. We touched on this in our article how to choose a trademark class.

What does dependency on the basic mark (the 5-year rule) mean?

The international registration is dependent on the basic mark for the first 5 years. If the basic application or registration is refused, cancelled or withdrawn within this period, the relevant part of the international registration is also affected and may fall outside the scope of protection. In the system, this is also called a "central attack." When the dependency period ends, the international registration becomes independent.

In practice, this means the following: before filing through Madrid, it is important that the basic mark in Türkiye is solid. An international application based on a basic application that has a high risk of opposition and is not yet settled can carry risk.

How are target countries selected?

Target countries must be members of the Madrid system. For protection in non-member countries, a separate application in that country's national system is required. When choosing countries, the following criteria should be assessed together:

• Current sales and exports: Countries where you already sell your product or plan to sell it should be the priority.
• Production and supply chain: Protecting the trademark in the countries where your products are manufactured reduces the risk of imitation.
• Markets with a high risk of imitation: In regions where counterfeiting is widespread in your sector, protection is a priority.
• Budget: The fee varies with the number of countries selected and each country's fee structure. Current amounts should be confirmed with WIPO's fee calculator.
• The country's approach to examination: The likelihood of refusal, the need for a search and the need for a local representative differ in some countries.

What is the difference between the Madrid route and a national application?

If a small number of countries are targeted, a country-by-country application and a local representative can sometimes make more sense. If many countries are involved, Madrid offers ease of management. The right route is determined by the target markets and the budget.

How is the right of priority used?

Under the Paris Convention, the priority period for trademarks and designs is 6 months. If an application is filed abroad within 6 months of the first filing date in Türkiye, the filing date in Türkiye can also be claimed as the priority date in those countries. That way, even if someone else files the same trademark in those countries during these 6 months, your date can be recognized as earlier. The priority claim must be made without missing the deadline and with the required information.

How is a Madrid application filed?

1. Basic mark preparation: An application is filed in Türkiye, or a registered trademark is identified.
2. Target country and list decision: The member countries in which, and the goods and services for which, protection will be requested are determined.
3. Application form: The application is forwarded to WIPO through the Turkish Patent and Trademark Office (TÜRKPATENT). The Office verifies that it conforms to the basic mark.
4. WIPO examination: WIPO carries out a formality examination and, if it finds the application in order, records the international registration.
5. Country examinations: Each target country examines the trademark under its own legislation and within its own time limits, and notifies its decision. Depending on the country, the result may be refusal, partial refusal or acceptance.
6. Registration and management: Protection begins in the countries that accept it. The international registration is renewed in 10-year periods.

The examination time differs in each country; it would not be right to give an exact time frame. In some countries the process concludes in a few months, in others it takes longer.

How do you plan the cost of a Madrid application?

The total cost includes the basic application expenses in Türkiye, the international application fee payable to WIPO and additional fees that vary with the countries selected. If a country issues a refusal or requires further action, local representative and response preparation costs may be added. For this reason, the budget should be considered not as a "one-time application fee" but together with the risk and management cost per country. Because the figures are updated frequently, confirm the current fees from official sources before filing.

If one country refuses, are the other countries affected?

No. A refusal decision affects only that country; protection in the other countries can continue. In the country that issued the refusal, a response must be submitted under that country's rules and time limits. In many countries, appointing a local representative is mandatory or practically unavoidable. The ground for refusal is most often a lack of distinctiveness or an earlier trademark in that country. If the deadline for responding is missed, protection may not be obtained in that country; for this reason, following up on notifications is important.

What can be done after the international registration?

• Adding new countries: Member countries not selected at the start can be added to the registration later with a subsequent request. This makes it possible to spread the budget over stages.
• Change and assignment records: Transactions such as a change of the applicant's address, a change of name or an assignment of the trademark are notified to the international register.
• Renewal: The international registration is renewed in 10-year periods, and renewal is managed from a single center.
• Continuing use: Genuine use of the trademark in the countries where it is registered reduces the risk of cancellation.

Common mistakes in international trademark applications

• Not assessing the basic mark sufficiently: A weak basic application puts international protection at risk.
• Not aligning the budget and the market plan in choosing countries: Unnecessary countries increase cost, and if necessary countries are skipped, a gap remains.
• Skipping the local language and meaning check: The trademark may have a negative meaning, or a look-alike, in the target country.
• Missing the priority period: After 6 months have passed, it may not be possible to obtain the same advantage.
• Neglecting renewal and change follow-up: Managing an international registration also requires keeping track of deadlines.

Note: The Madrid system makes filing easier, but it does not guarantee that protection will be granted in every country. Each country makes its own decision, and no service can promise "certain registration."

Conclusion

The Madrid Protocol is a practical way to protect your trademark in many countries with a single application. Success depends on the solidity of the basic mark in Türkiye, on choosing the target countries correctly and on not missing the priority period. If you have an export or foreign sales plan, building the international strategy together with the Türkiye application is the most efficient approach. For details, you can look at our international trademark registration service and request a free preliminary consultation through the quote form.