How to File a Trademark Abroad Under Madrid

This is a route-selection and filing guide. For the underlying doctrine, what the Madrid System is and how it fits the treaty framework, see international trademark registration and the Madrid System. What follows assumes you already know the shape of it and now have to decide and file.

Which route do I actually file: Madrid, EUTM, or direct?

Run these three questions in order. They resolve most cases without argument.

1. Is every target country a Madrid member? If any market you care about is not, that country is a direct national filing, full stop. There is no workaround. Madrid membership is a hard gate, so check the WIPO member list against your actual sales map before you plan anything else.

2. How many countries? At one or two foreign markets, Madrid’s overhead rarely pays for itself. You pay WIPO’s basic fee plus the USPTO certification fee to get access to a system whose main value is volume, and you still need local counsel if either country refuses. Direct filings are cleaner. Somewhere around three or four countries the arithmetic flips, and by six or eight it is not close.

3. Is the EU one of your targets? A European Union Trade Mark covers all 27 member states in one unitary, all-or-nothing right, so a single conflicting national mark can defeat the whole thing. See our EUIPO filing guide for the mechanics. The decision rule: if the EU is your only foreign target, file the EUTM directly with the EUIPO. If the EU is one of several targets, designate the EU through Madrid so it lives in the same portfolio as everything else. Either way you get the same EUTM with the same unitary risk, so the choice is about administration, not substance.

The honest answer for most growing businesses is a blend. Madrid for the cluster of members where centralization pays, a EUTM designation for Europe, direct filings for non-members and for any single market so important that you want it insulated from your U.S. base.

What has to be true before I can file?

Madrid is not a standalone filing. Four things must line up.

• A U.S. basic application or registration. You need a live filing at the USPTO to serve as your base. The USPTO’s own outbound process guidance recommends waiting until you have received your first office action on a pending application, because that office action tells you whether the base has a problem, and a problem in the base is a problem in everything downstream.
• Entitlement. You must be a U.S. national, be domiciled in the U.S., or have a real and effective industrial or commercial establishment here.
• An exact match. The international application must match the base on owner, on the mark itself, on any description of the mark, and on any color claim. The USPTO certifies by comparing them. A spelling difference is enough to be denied certification.
• Goods and services within the base. Your international application can never claim more than the base covers. It can narrow, never widen.

You may combine several U.S. basics into one international application, but only if owner, mark, description, and color claim are identical across all of them. That is what triggers the higher $150 per class certification fee.

What is the actual filing sequence?

Step 1: File the MM2, and check which system you file it in. The international application is WIPO form MM2, and the filing system is changing right now. The USPTO’s Trademark Electronic Application System International (TEASi) was the only route until July 31, 2026. From July 31 through September 30, 2026 you may file a new international application in either TEASi or WIPO’s Madrid e-Filing. Beginning October 1, 2026, Madrid e-Filing is the single place to file an international application based on a U.S. application or registration. Confirm the current state on the USPTO’s TEASi page before you start, because a half-finished draft in a retired system is wasted work. Whichever system you use, let it pull the data from your basic mark rather than retyping it, and where you must key something by hand, take it from the Trademark Status and Document Retrieval record, never from memory. Transcription errors are the main cause of denied certification.

Step 2: Pay the USPTO certification fee. $100 per class on a single basic, $150 per class on multiple basics. It is due at submission and it is non-refundable, including when certification is denied.

Step 3: Watch the two-month clock. Your international registration bears the date the USPTO received the international application, but only if WIPO receives it within two months of that date. Miss the two months and your registration date slides to the date WIPO actually received it. This is why you do not sit on a certification request.

Step 4: Claim priority if you still can. If you file the international application within six months of your U.S. basic application filing date, you can claim that date as your priority date. This is the single largest date advantage available in the whole process, and it is the reason the six-month mark should be a hard calendar entry the day you file at the USPTO.

Step 5: Survive WIPO’s formalities exam. WIPO checks form, classification, and fees, not registrability. If something is off it issues a notice of irregularity, and the international registration waits until you fix it. Classification objections are the most common cause.

Step 6: Designate. You name the contracting parties where you want protection. WIPO records the international registration, publishes it, and notifies each designated office.

What happens in each designated country, and where does the money go?

This is the step people misjudge, and it is where the budget is decided. Each designated office examines under its own law and may issue a provisional refusal within 12 months of WIPO’s notification, or 18 months where the contracting party declared the longer period (why that is, and what WIPO does and does not decide). Silence past the deadline is the good outcome: protection is effectively granted and it costs you nothing further.

A provisional refusal is a different animal. To respond, you deal with that national office under that national procedure, in that national language, which in practice means hiring local counsel in that country. This is the biggest cost surprise in the Madrid System. The WIPO fees are published and predictable. The refusal responses are not, and one contested refusal in one country can cost more than the entire international application did. Budget for it before you designate, not after the notice arrives.

Practical consequence for route selection: if you have specific reason to expect a fight in a given country, for example a known similar local mark, Madrid saves you very little there. You were always going to pay local counsel.

What does it cost, line by line?

WIPO’s fees are in Swiss francs and are published in the Madrid schedule of fees:

• Basic fee: 653 CHF if no reproduction of the mark is in color, 903 CHF if any reproduction is in color. The 250 CHF gap is a real reason to ask whether you need the color version registered at all.
• Complementary fee: 100 CHF for each designated contracting party that has not fixed its own individual fee.
• Individual fee: whatever that country set, for the many countries that opted out of the complementary fee. These vary widely and are the bulk of most bills.
• Supplementary fee: 100 CHF per class beyond three.
• Subsequent designation: 300 CHF basic fee, plus the complementary or individual fee for each party added.

Then the USPTO certification fee on top, and local counsel wherever you are refused. WIPO publishes the individual fees by country, and its fee calculator will price a specific country and class list; use the calculator before you finalize the designation list, because dropping one marginal country can move the total meaningfully.

How do I add countries later?

Through subsequent designation, which is the single best feature of the system for a business that expands in stages. You do not refile. You add contracting parties to the existing international registration, pay the 300 CHF basic fee plus that country’s fee, and the new designation runs its own 12 or 18 month refusal clock from its own notification date.

Two things to understand about it. First, a subsequent designation takes the date of the subsequent designation, not your original international registration date, so it buys convenience, not priority. Second, it is still bounded by the original base: you cannot use a subsequent designation to add goods and services the base never covered.

The strategy this enables: designate the markets you are actually in now, not the markets you might someday enter. Adding later is cheap. Paying individual fees for five years in a country you never entered is not.

What are the traps that actually bite?

Central attack, and the five-year clock. For five years from the international registration date, the whole thing rides on the U.S. base, and if the base falls every designation falls with it. The doctrine is covered in full on the concept page; what it demands of you here is operational. File on the most mature base you have. Calendar the five-year date. Treat any office action, opposition, or cancellation petition against the U.S. base as a portfolio-wide emergency rather than a domestic nuisance, because that is what it is. After five years the international registration is independent and you can stop watching.

Transformation, and the three-month escape hatch. If the base does fall and the international registration is cancelled, you have three months from the date of cancellation to transform each designation into a direct national application that keeps your original date. Diary that three months the day cancellation lands, because it is short and it is the only door. Budget realism: transformation means paying national filing costs in every designated country at once, which is precisely the bill Madrid existed to avoid.

Scope of protection: the U.S. narrowness problem. The USPTO demands unusually precise and narrow identifications of goods and services. A U.S.-based international registration inherits that narrowness and carries it into jurisdictions that would happily have granted a broad class heading. Your competitor who filed nationally in that country gets a wider right than you do off the same mark. There is no fix inside Madrid, because the base caps everything. If broad coverage in a specific market is commercially important, file directly there and write the specification to that country’s practice. This is the strongest single argument for a blended strategy.

Madrid does not excuse use requirements. Registration and maintenance obligations remain national. The U.S. wants specimens and declarations of use. The EU exposes a EUTM to non-use cancellation after five years. Others differ again. An international registration is one administrative wrapper over many separate national obligations, and WIPO will not remind you of any of them.

China, and why timing beats everything. China is first-to-file and squatters watch foreign brands and factory arrangements (the mechanics of first-to-file squatting). The filing rule that follows: if you are going to manufacture in China, file in China before you engage a factory, not after, and file the Chinese-character version too. A Madrid designation is a perfectly good mechanism for it. The point is not the route, it is the date.

What do I do at year 10?

Renew. The international registration runs 10 years and renews in 10-year blocks for every designated country in one transaction with WIPO: 653 CHF basic fee, plus 100 CHF per complementary-fee party, plus 100 CHF per class beyond three, plus individual fees where they apply. The renewal window opens six months before expiry, and there is a six-month grace period after with a surcharge of 50% of the basic fee.

Renewal is also the natural audit point. It is the moment to drop designations in countries you never entered and stop paying for them, and to confirm you have actually satisfied each country’s use requirements, because a renewed registration that is vulnerable to non-use cancellation is renewed money spent on nothing.

The bottom line

Route selection carries most of the value here, and it happens before any form is filed: non-member countries are direct filings, one or two markets are direct filings, the EU alone is a EUTM, and several members plus a solid U.S. base is Madrid. On the Madrid path, the mechanics are unforgiving in specific places: the base must match exactly, the two-month transmission window and the six-month priority window are hard dates, each designated office refuses under its own law on a 12 or 18 month clock, and a refusal means local counsel regardless of what you saved on filing. The two structural risks worth planning around are central attack in the first five years, with three months to transform if it lands, and the narrow U.S. specification you carry into countries that would have given you more. For the doctrine behind all of this, see international trademark registration and the Madrid System; for the rest of the brand picture, browse our trademark guides.

This guide is general educational information about international trademark filing procedures, not legal advice, and reading it does not create an attorney-client relationship. Fees, treaty rules, and national practice change, and how they apply depends on your specific facts. Before filing or making decisions about your brand, consult an attorney licensed in your jurisdiction or a qualified trademark representative in the country concerned.