How to Protect a Trademark in Multiple Countries Efficiently

Protecting a brand name or logo in more than one country is vital for businesses with international ambitions. Infringement is easier than ever in a globalized marketplace, yet many companies fail to register their trademarks beyond their home country. This article explains how to secure multi‑jurisdictional trademark protection efficiently by using the World Intellectual Property Organization’s (WIPO) Madrid System and complementary national or regional registrations. Structured like an EU trademark renewal guide, it covers the key steps, costs, timelines, and practical tips for safeguarding your mark in multiple countries.

Why international trademark protection matters

Trademarks confer the exclusive right to use a sign for certain goods or services. Without registration, enforcement is difficult and may be limited to the country where a mark is first used. WIPO notes that “the registration of a trademark confers on its owner the exclusive right to use it” and that protection is generally valid for ten years with the possibility of indefinite renewal. However, registration is territorial: a mark registered in Poland gives no automatic rights in Germany or China. If a third party registers or uses a similar mark abroad, it may block expansion into that market.

Many businesses approach international protection reactively—after infringement arises. A proactive strategy using the Madrid System allows you to file a single application through your home intellectual property (IP) office and designate up to 131 countries covered by 115 members. This reduces cost and administrative work, while preserving priority from your home registration. The following sections explain how to plan, file and maintain an international trademark portfolio.

Cost of protecting a trademark across borders

National and regional registrations

Registering in each country individually can be expensive and time‑consuming. Fees differ widely; for example, the United States Patent and Trademark Office (USPTO) charges US$350 per class for an electronic application. The European Union Intellectual Property Office (EUIPO) offers a single EU trade mark (EUTM) that covers all EU member states for a basic fee of €850. National filings are still appropriate if your business operates solely in one or two countries. WIPO emphasises that national, EU, and international systems are complementary; you should choose the route that matches your commercial footprint.

International registrations via the Madrid System

The Madrid System simplifies multi‑country protection. WIPO states that an international application requires just one set of fees: a basic fee of 653 Swiss francs for a black‑and‑white mark or 903 CHF for a mark in colour, plus complementary fees of 100 CHF for each designated country and supplementary fees for each class beyond three. Some countries charge individual fees instead of the standard complementary fee; these are set by the designated member and may reflect local examination costs. Applicants from least‑developed countries enjoy a 90 % reduction on the basic fee. All fees must be paid to WIPO in Swiss francs.

Choosing between paying complementary or individual fees involves trade‑offs. For instance, designating the United States through Madrid triggers an individual fee (currently around 380 USD per class for filing and subsequent renewal). A cost‑effective strategy may involve designating only countries where protection is essential, while relying on unregistered rights or national filings elsewhere.

Determining the scope of protection

Classifying goods and services

Trademarks are registered for specific classes of goods or services. The Nice Classification, administered by WIPO, divides goods and services into 45 classes and publishes a new edition every five years. Classes 1–34 cover goods, while classes 35–45 cover services. For example, class 25 concerns clothing, class 9 includes computer software, and class 35 covers advertising services. Each class you select increases filing fees. A clear, precise specification will reduce objections and ensure enforcement covers the intended products. Review competitor filings in WIPO’s Global Brand Database to avoid conflicts and to understand how similar marks are classified.

Priority under the Paris Convention

If you have filed a domestic application but are not ready to enter multiple markets, you can rely on the Paris Convention’s right of priority. WIPO summarises that an applicant has six months from the first filing date to file subsequent applications in other countries while retaining the original priority. Using this grace period allows you to secure investment or conduct market tests before spending on worldwide filings. Note that the priority claim must be indicated when filing via the Madrid System.

How the Madrid System works

Eligibility and basic mark requirements

To use the Madrid System, you must be a national of, have a domicile in, or own a business in one of the 131 countries covered by 115 members. You must also possess a basic mark – a pending or registered national or regional trademark filed in your home IP office. The international application is linked to this basic mark for five years from registration. If the basic mark is refused, limited or cancelled during that period, the international registration is affected to the same extent (a “central attack”). After five years, the international registration becomes independent of the basic mark.

Filing process

WIPO describes a three‑step process for filing an international trademark application:

1. File through your office of origin. Submit the international application to your home IP office (e.g., USPTO, EUIPO). The office certifies that the information matches the basic mark and forwards the application to WIPO.
2. Formal examination and registration by WIPO. WIPO checks formality requirements, records the mark in the International Register, and publishes it in the WIPO Gazette of International Marks. If issues arise (e.g., classification errors or missing fees), WIPO issues a Notice of Irregularity to be addressed via your home office.
3. Substantive examination by designated offices. Each designated IP office (DIP) examines the international application under its national law. They must communicate a refusal or acceptance within 12 months, or 18 months if they have made a declaration to extend the time limit. A refusal from one country does not affect protection in others; you may respond directly in that jurisdiction to overcome objections. If no refusal is issued within the time limit, protection is deemed granted (“tacit grant”).

This process means you deal primarily with one application. Even though individual offices examine under their own laws, many of the procedural formalities are handled centrally. WIPO emphasises that “file a single international trademark application and pay one set of fees” to apply for protection in 131 countries.

Managing and renewing your international registration

An international registration lasts ten years from the date of registration and is renewable indefinitely for further ten‑year periods. WIPO’s eMadrid platform allows you to renew, expand, or modify your registration online. Renewing requires payment of a basic renewal fee and any relevant complementary or individual renewal fees. Renewal maintains protection in all designated countries without separate national renewals, saving time and administrative costs.

Expanding protection after registration is flexible: you can add new countries at any time through a subsequent designation without affecting existing rights. This is useful if you enter new markets or if additional Madrid members join the system. WIPO highlights that you can “expand your global trademark portfolio through one centralized system”.

Dealing with refusals and limitations

If a designated office issues a provisional refusal, you must respond through a local representative within the timeframe specified by that country. Failure to respond may result in refusal. Note that some countries require a local address for service even if the applicant’s home address is provided; this often necessitates appointing a local attorney. For example, when filing in the European Union via the Madrid System, non‑EU applicants must appoint a professional representative if any opposition arises.

Timeline of an international trademark registration

• Preparation phase (0–6 months): File a domestic application or registration (basic mark) and decide whether to rely on Paris Convention priority. Conduct clearance searches in target countries to avoid conflicts.
• Application submission (month 0): Prepare the international application using WIPO’s forms or eMadrid. Pay the basic, complementary, and supplementary fees. Your home office certifies and forwards the application to WIPO.
• Formal examination (month 1–2): WIPO reviews formalities, issues the international registration number, and publishes the mark in the Gazette. WIPO sends you a certificate of international registration once formalities are satisfied.
• Substantive examination (months 3–18): Each designated office examines the mark. Refusal notices must be issued within 12 or 18 months. If no refusal is received, protection is automatically granted.
• Opposition periods (varies by country): After national publication, third parties may file oppositions, usually within a few months. Successful opposition may restrict or prevent registration in that country. Monitor deadlines closely and engage local counsel if necessary.
• Five‑year dependency period: During the first five years, any limitation or cancellation of your basic mark affects the international registration. After five years, your international registration becomes independent.
• Renewal (10 years after registration): Renew the international registration via WIPO. Pay renewal fees and update any changes in ownership or address.

Comparing strategies for multi‑country protection

Protection route	Coverage	Key advantages	Potential downsides
National filing	Individual country	Tailored protection under local law; lower cost if only one or two countries are needed	Separate applications, multiple fees, and renewal dates; no central management
Regional systems (e.g., EU trademark)	All member states of a region	One application covers all EU states; strong, uniform protection; conversion into national applications possible	Vulnerable to central attack: a single successful opposition can block the entire registration; it may not suit if only a few countries are needed
Madrid System	Up to 131 countries	Single application, one set of fees; central management; ability to add countries later; uses home mark as basis	Requires basic mark; central attack for first five years; individual refusals require local responses; some countries charge high individual fees

Conclusion

Securing trademark protection in multiple countries no longer requires filing dozens of separate applications. The Madrid System offers an efficient route to broad coverage, complemented by national and regional registrations. By understanding the costs, classification requirements, eligibility criteria, and procedural steps, you can plan an international trademark strategy that balances scope with budget and risk. With proper monitoring and timely enforcement, your brand can thrive across borders and safeguard its identity against misuse.