Frequently Asked Questions: Madrid System

Madrid Customer Service

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All international applications based on national or regional applications or registrations should be filed using Form MM2. You can complete it by using the Madrid Application Assistant - which can retrieve all required information directly from the database of your local IP Office (Office of origin) - or by downloading and manually filling in Form MM2. Forms MM1 and MM3 are no longer applicable nor available on the Madrid website.

All International Applications designating the United States of America must also include Form MM18 (Declaration of intention to use the mark). Learn more about how to file an international application.

Note: If an international application is filed using the form MM1 or MM3 on or after October 31, 2015, the application will be considered irregular under Rule 11(4)(a)(i) of the Common Regulations. If the irregularity is not remedied by the Office of origin within three months from the date of the notification of the irregularity, the international application will be considered abandoned under Rule 11(4)(b).

Forms may be sent by mail (through a postal or another delivery service) or through Contact Madrid. Forms may also be sent via the Madrid Portfolio Manager.

Please do not submit by mail a form already sent to WIPO electronically.

Communication through Contact Madrid or the Madrid Portfolio Manager is preferable.

Madrid Registry contact details.

Information about international application fees, including calculation of fees and payment methods is available under "How to file an application."

You can check the status of international registration documents using the Madrid Monitor tool. Information relating to your international application or subsequent designation is also available through Madrid Monitor (search for your mark by name, number, date, class or country, then open the mark record. Status updates are available under the Real-time Status tab).

The current status of all international registrations in force is published by WIPO in Madrid Monitor. This database contains the bibliographic data of all international registrations in force and reproductions of marks which consist of or contain special characters or figurative elements.

Information is made available free of charge and updated daily.

Digitized copies of the following notifications, received by WIPO since January 1, 2005, can also be accessed directly in Madrid Monitor in PDF format:

  • notifications of provisional refusal
  • statements of confirmation of total provisional refusal
  • statements of grant of protection following a provisional refusal
  • statements of grant of protection where no notification of provisional refusal has been communicated
  • statements indicating that the ex officio examination is completed but that a mark’s protection can still be subject to opposition or observations by third parties
  • further decisions
  • invalidation notices

Digitized copies of all documents received by WIPO for international Registrations where you are the owner or registered representative can be accessed via the Madrid Portfolio Manager.

The international registration of your mark is valid for 10 years. You can renew the registration at the end of each 10-year period directly with WIPO with effect in the designated Contracting Parties concerned. A renewal reminder letter will be sent by WIPO to the holder and representative of an international registration six months before its expiry.

You can file a request online for the renewal of an international registration, from three months before its expiration date until the end of the six-month grace period following this date and to pay the due fees using a Current Account at WIPO or a credit card.

For payment by bank transfer, you will need to request your renewal by submitting the form MM11 via Contact Madrid. The following information should be included in the request: the international registration number concerned, the designated Contracting Parties for which the renewal is requested and the details of the payment. Learn more about the renewal of your international registration.

The request for the recording of a change in ownership of an international registration must be presented to WIPO on the form MM5, either directly by the recorded holder (or the recorded representative, if any), through the Office of the Contracting Party of the recorded holder, or through the Office of the Contracting Party of the new owner (the transferee).

The fee for the recording of a change in ownership is 177 Swiss francs for each international registration concerned, according to item 7 of the Schedule of Fees.

The Office of a designated Contracting Party must communicate its notification of provisional refusal within one year from the date on which it was notified of the international registration or subsequent designation by WIPO. In certain limited circumstances, Contracting Parties can opt to extend the refusal period to 18 months, or even longer. For further information on the applicable time limits, please refer to the declarations made by the Contracting Parties.

In the absence of a notification of provisional refusal within the applicable time limits, the mark is considered protected in the territory of the designated Contracting Party concerned for all the goods and services for which protection has been requested.

The procedure following the notification of a provisional refusal of protection is determined by the Office of the designated Contracting Party concerned and is carried out directly between the holder and the Office. It does not involve WIPO.

All the information required to follow up with the Office is in the notification of provisional refusal issued by the Office. This includes the grounds for refusal, time limit for requesting review or appeal, authority to which such request for review or appeal should be made and whether or not the assistance of a local representative is mandatory.

Requests must be sent via the Contact Madrid service.

Detailed information on the different documents and delivery is available on our extracts page.

Documents are provided following payment according to the Schedule of Fees.

An international registration is deemed to replace a national or regional registration for the same mark, covering the same goods and services, recorded in the name of the same holder. Where replacement has taken place, the replacement does not impact the national or regional registration, it means that the holder essentially has two rights - one at the national/regional level and one at the international level. If an international registration replaces an earlier national/regional mark, the holder may decide to let the national/regional mark lapse while still benefiting from the date of the rights acquired by reason of the national or regional registration.

There is no WIPO form for replacement. In fact, holders do not need to do anything to take advantage of replacement because it is automatic. However, it is possible for the holder of the international registration to request the national/regional IP Office concerned to take note of the replacement. This provides assurance to the holder that the requirements for replacement under Article 4bis(1)(iii) of the Madrid Protocol have been met and the replacement has taken place. By taking note, the Office concerned acknowledges in its Register that while the date of the international registration may be recent, the holder has had protection in its territory as from the date of the national/regional right. The Office will also notify WIPO where they have taken such note in their register of the replacement. If the notification complies with the prescribed requirements, WIPO will record the replacement details in the International Register (so third parties are aware).

The following example illustrates how replacement works:

  • You have a national trademark registration in Australia dated January 1, 1999.
  • On January 1, 2021, you file an international application covering Australia. If this is in order, and later granted protection by the IP Office in Australia, you will have protection in Australia under the international registration from January 1, 2021.
  • If the Australian designation in the international registration is the same as the Australian national mark, covering the same goods and services, it will automatically replace the Australian national registration. The later designation of Australia in the international registration will then benefit from the earlier date of rights provided under the national mark (i.e., January 1, 1999).

Questions on providing an email address to WIPO for communications under the Madrid System

Applicants, in the international application, new holders, in a request for the recording of a change in ownership, and representatives, appointed as such in the international application, in a request for recording or in a separate communication, must indicate their own email address.

The COVID-19 pandemic continues to disrupt postal services worldwide in various degrees. Further, in some cases, guidance from local health authorities has affected WIPO’s ability to send postal communications. Nevertheless, WIPO has never stopped sending electronic communications to its users.

In September 2020, the Assembly of the Madrid Union decided to make email a required indication and privilege electronic communication to prevent that applicants and holders, or their representatives, miss receiving time sensitive communications, such as notifications of provisional refusal, and fail to react on time, which could result in loss of rights.

Email address becomes a required indication in:

  • international applications received by the Office of origin on or after February 1, 2021;
  • requests for recording of change in ownership received by WIPO or by the Office concerned, when presented through an Office, on or after February 1, 2021; and,
  • requests to record the appointment of a representative made on or after February 1, 2021, in an international application, in a request for recording or in a separate communication.

Yes, you, as the applicant, and your representative, if you appoint one, have to provide your respective email address in the international application. The same applies if you are the new holder, in a request for the recording of a change in ownership, and you appoint a representative.

While WIPO needs your full contact details (including email address), WIPO will communicate with your representative. However, WIPO will communicate with you in the following few situations:

  • where the appointment of your representative is irregular or cancelled, at your request or at the request of your representative, communications will be sent to you until a representative is appointed;
  • six months before the expiry of the renewal due date, an unofficial notice will be sent to you and your representative, reminding both of you of the exact date of expiry of the international registration;
  • in case of non-renewal of the international registration, the notification of such non-renewal will be sent to you and your representative.

No, this would be against the Regulations under the Madrid Protocol because the applicant or holder must indicate his or her own email address. There are further practical and legal considerations to take into account. For example, if the appointment of the representative is cancelled, WIPO would send all communications to the email address the applicant or holder has indicated as his or her own. This could have negative implications for the former representative if the applicant has indicated the email address of the former representative as his or her own and rights are lost as a result.

WIPO will continue to send communications by postal services to applicants, holders or representatives who have not indicated an email address because they were not required to do so before the date of entry into force of the new requirement (i.e., before February 1, 2021). It will also send communications by postal services when an electronic communication fails to reach its intended recipient.

No, WIPO will not make your email address available to the public. WIPO will not display your email address on the Madrid System online information services (e.g., Madrid Monitor, Madrid Real-time Status) nor publish it in the WIPO Gazette of International Marks.

If you are the applicant, WIPO will send an irregularity notice to you or your representative (if any), and you will have three months from the date of the notification of the irregularity by WIPO to indicate your email address to WIPO. If you do not indicate it within that period, your international application will be considered abandoned.

If you are the new holder in a request for the recording of a change in ownership, WIPO will send an irregularity notice to you or your representative (if any), and you will have three months from the date of the notification of the irregularity by WIPO to indicate your email address to WIPO. If you do not indicate it within that period, WIPO will not record you as the new holder and the request will be considered abandoned.

If you are the representative, WIPO will not record your appointment as your request will be irregular. WIPO will inform you as well as the applicant or holder of this fact and will send all relevant communications only to the applicant or holder until you are duly appointed. The applicant or holder may appoint you as representative in a new communication meeting the prescribed requirements.

An irregular appointment made in an international application or in a request for recording, will prevent the recording of the appointment, but it will not prevent the international registration or the change in ownership, as the case may be, from being recorded in the International Register.

No, this will not affect the date of your international registration, provided WIPO has sufficient information to contact you or your representative by any possible means (e.g., a telephone number) and provided you remedy this irregularity before the expiry of the given time limit.

You can search for your international registration or pending application on Madrid Monitor. The image of an envelope to the left of your international registration or pending application indicates that WIPO is still sending postal communications because neither you nor your representative has indicated an email address.

You can use an online form in Contact Madrid to indicate or change your email address. Users can indicate their email address and list their international registrations. For pending applications, users can indicate the corresponding WIPO reference number, which appears in all communications from WIPO. WIPO will process the request and reach out to users to ask further information or to confirm the validity of the request.

Questions on Brexit and its implications for international applications and registrations under the Madrid System

As from January 1, 2021, a comparable national trademark will be recorded on the Register of the United Kingdom (UK) for every international registration protected in the EU before January 1, 2021.

Where protection results from multiple designations of the EU in one international registration (e.g. a designation made in the international application and a subsequent designation), one comparable national trademark will be recorded for each designation.

These newly recorded comparable UK trademarks will be independent from the international registration and governed by the UK law. Holders will have to manage them directly with the UK Office (UK IPO).

Holders of an international registration designating the EU that the EUIPO has neither refused nor protected on January 1, 2021, may apply for a national trademark registration with the UK IPO in the nine months after January 1, 2021 to preserve the date of the designation of the EU.

The same applies for holders whose international registration or subsequent designation of the EU, as the case may be, is recorded in the International Register after December 31, 2020, but with a date earlier than January 1, 2021. In this case, the said nine-month period will be counted from the date on which the international registration or subsequent designation of the EU is recorded in the International Register.

No, the early renewal of your international registration will have no effect on the comparable national trademark that was automatically recorded on the UK Register on January 1, 2021. Any international registrations designating the EU that expire after January 1, 2021 must be renewed directly with the UK IPO in accordance with the UK law and practice.

This is because the renewal of an international registration is only effective from its expiration date, regardless of the date of payment.

To find out how to renew your comparable trademark in the UK, please refer to the guidance issued by the UK IPO.

Yes, the renewal of the EU designation will have an effect in the UK providing (i) the EUIPO had granted protection to the mark in the international registration before January 1, 2021; (ii) the renewal fees for the international registration have been fully paid to WIPO before January 1, 2021; and (iii) WIPO has recorded the renewal in the International Register.

Please note holders must inform the UK IPO if their international registration has been renewed late (for example, within the six-month grace period) or where the renewal has not been recorded in the International Register (for example, because it was requested close to the expiry date and had not been processed by WIPO before January 1, 2021). In this situation, the comparable national mark will have a status of “expired”. Holders may inform the UK IPO of the renewal by email at: WIPOrenewaltrademarks@ipo.gov.uk. Once notified of the renewal, the UK IPO will change the status of the mark to reflect the renewal.

Yes, but you would need to subsequently designate the UK in the international registration that prompted the creation of a comparable UK trademark. Under Article 4bis of the Madrid Protocol, that international registration would replace the comparable UK trademark, allowing the holder to regain the advantages of centralized management for the protection of the UK. The holder may request the UK IPO to take note of this replacement in the UK Register.

The same would apply to a UK registration for which the holder has claimed the earlier date of a designation of the EU. The holder may subsequently designate the UK in the international registration concerned after the mark has been registered in the UK and Article 4bis of the Madrid Protocol would apply accordingly.

However, holders must be aware that, while a comparable UK right will be recorded, a subsequent designation of the UK would be subject to examination by the UK IPO and be published for opposition.

Yes, providing the requirements set out in Article 4bis(1) of the Madrid Protocol are met.

The following example illustrates how replacement works in your circumstances:

  • You have an international registration dated February 1, 2019 designating the EU. It has been granted protection by the EUIPO.
  • On January 1, 2021, the UK IPO automatically recorded a comparable trademark on the UK register. The UK rights are preserved from February 1, 2019 (i.e., the date of the international registration designating the EU - taking into account any priority date, if applicable).
  • On February 1, 2021, you add the UK to your existing international registration by way of a subsequent designation. If this is in order, and later granted protection by the UK IPO you will have protection in the UK under the international registration from February 1, 2021.
  • As a result, you would have “double protection” in the UK – protection under the comparable UK trademark and protection under the UK subsequent designation in your international registration.
  • If the UK subsequent designation in the international registration is the same as the comparable trademark recorded earlier by the UK IPO, the comparable trademark will automatically be replaced by the UK subsequent designation of the international registration. “Automatically replaced” means that the UK subsequent designation in the international registration will benefit from the earlier date of rights in the UK (i.e. February 1, 2019). You may then request the UK IPO to take note of the replacement and, if you wish, allow the UK comparable trademark to lapse.

For more information on the principle of replacement, please refer to [link FAQ of Replacement]

Yes, you can make use of replacement provided that your subsequent designation of the UK takes effect after the earlier date of rights in the UK as preserved on January 1, 2021 (see Article 4bis(1)(iii) of the Madrid Protocol). Please see the following example below:

  • You have an international registration dated February 1, 2019 designating the EU. It has been granted protection by the EUIPO.
  • On February 1, 2020, you subsequently designated the UK. The UK IPO granted protection. You now have a UK right dated February 1, 2020 under the international registration.
  • On January 1, 2021, the UK IPO automatically recorded a comparable trademark on the UK register based on your EU designation. The UK rights are preserved from February 1, 2019 (i.e., the date of the international registration designating the EU).
  • As a result, you have “double protection” in the UK – protection under the comparable UK trademark and protection under the UK subsequent designation in your international registration.
  • If the UK subsequent designation in the international registration is the same as the comparable trademark recorded by the UK IPO, the comparable UK trademark will automatically be replaced by the UK subsequent designation of the international registration. “Automatically replaced” means that the UK subsequent designation of the international registration will benefit from the earlier date of rights in the UK (i.e., February 1, 2019). You may then request the UK IPO to take note of the replacement and, if you wish, allow the UK comparable trademark to lapse.

As a UK national or legal entity, you are not entitled to file an international application through the EUIPO as Office of origin unless if you have a specific entitlement in the EU.

However, as the UK is a Contracting Party to the Madrid Protocol, you are entitled to file through the UK IPO as the Office of origin and, as the new holder, claim entitlement through the UK in a request for the recording of a change in ownership.

More questions?

If you couldn't find an answer to your question on this page or through the Madrid System homepage, then feel free to contact us.

Disclaimer: The questions and answers provided on this page serve a purely informative purpose and are not a legal point of reference. They do not necessarily represent the official position of WIPO or its member states.