Using WIPO's Madrid System to Protect Trademarks Abroad – A Trademark Lawyers' Perspective

In 2023, entrepreneurs and business owners across the world filed almost 65,000 international trademark applications through WIPO’s Madrid System, as well as some 40,000 requests to renew their existing international trademark registrations. There’s potentially no shortage of added-value work for trademark practitioners!

Though the Madrid System provides a simplified and streamlined solution for seeking protection of – and subsequently managing – a trademark in up to 130 countries simultaneously, many international trademark registration owners do indeed opt to use a trademark professional to get advice on trademark protection and rights enforcement, and even to manage their trademark portfolios.

Eager to know what such intellectual property professionals have to say about the Madrid System, we spoke to the Mori Hamada Matsumoto Law Office in Japan to find out more about their experience with WIPO’s international trademark system.

Introducing Mori Hamada & Matsumoto

Photo of the Matsumoto glass tower block with trees in the foreground
Mori Hamada & Matsumoto’s head office in Tokyo (Photo: MHM)

Established in 2002, Tokyo-based Mori Hamada & Matsumoto (MHM) is a leading general law firm, providing a full suite of services from legal services in specific fields, rights enforcement, litigation, and more.

Over the years, MHM has built up a network of overseas offices throughout Asia – as well as in New York – and has nurtured rich connections with local IP Offices right across the globe.

MHM represents a wide range of companies, from large corporations to small and medium-sized enterprises. In the area of trademark law, MHM’s clients include Shiseido – consistently one of the top filers under the Madrid System in recent years –, Pan Pacific International, and Yamaha Motor, whose products are sold in more than 200 countries.

"It’s extremely important to eliminate as much risk as possible when developing a business, regardless of the size of the company. Trademark protection is an important part of that. Business owners should consider protecting their trademarks well before they start discussions with local licensees in countries into which they plan to expand in the coming years."
Naofumi Tanaka, MHM

Getting familiar with the Madrid System

MHM started using the Madrid System almost a decade ago. The impetus? Their clients were looking for ways to reduce both the cost of and labor involved in acquiring and maintaining trademark protection abroad.

"We tested out the Madrid System and found that there were significant benefits in terms of costs and central management of rights! We started using it as much as possible. We now handle a yearly average of 100 applications for international trademark registrations. That number is steadily growing as new countries join the Madrid System, and as it becomes more widely known in Japan!"
Naofumi Tanaka, MHM

Effectively using the Madrid System

Some of MHM’s favorite features

"Thinking ahead and properly planning and securing trademark protection will help your business later. There are many things that can happen along the way, and many ways in which your trademark protection may need to evolve. The Madrid System can support this! "
Naofumi Tanaka, MHM

Extending protection into new markets as and when you need to

"Subsequent designation is a nice feature of the Madrid System! It lets you extend the scope of protection of your trademark to other – or new – Madrid System Members. So, using just your single international trademark registration you can easily enter new markets later, according to the development of your company and the budget you have available."

Did you know? In 2022, international trademark registration holders requested some 60,000 subsequent designations – seeking to extend the scope of protection of their brands to additional Madrid System Members!

Find out more about subsequent designation.

Changing ownership centrally

Business woman and business man shaking hands with a contract. There is a pen on the contract document. Focus is on the foreground with the three people in the office out of focus in the background.
"For a company with multiple national trademark registrations, a change in ownership can be expensive. They must request the change in each country, provide a wide variety of documents and will often need to use local agents. With the Madrid System, you can transfer ownership of multiple international trademark registrations in all the countries covered, simultaneously through a single procedure managed through WIPO online!

We have clients with numerous international trademark registrations, some covering more than 30 countries and regions. If they needed to change ownership using a local agent in each country, the cost could be well over 3 million Yen (more than 20,000 USD). The Madrid System keeps cost much lower!, say MHM.

Find out more about changing ownership.

Getting confirmation of protection faster

Under the Madrid System, the IP Office of each country where you seek protection performs substantive examination of your trademark. Each Office must grant or refuse protection within a given time limit – 12, or in some cases 18 months from the date on which WIPO notified the Office of its designation.

"In our experience of using the national route – applying for protection of a trademark in several individual countries directly through each national IP Office – it can take several years to receive examination results. A company that plans to launch a new brand on a large scale within three years needs to secure protection of its brand name at least one year before launch. In many cases, countries have been unable to provide examination results in time.

By filing applications for international trademark registrations for our clients through the Madrid System, we can get examination results much faster. That quick turn-around really contributes to a company's ability to formulate business plans."

In conclusion…

"We hope to see more countries join the Madrid System, such as Argentina, Nepal, Uruguay, Saudi Arabia and Sri Lanka. More companies will surely be interested in using it the more it grows."
Naofumi Tanaka, MHM

About the Madrid System

The Madrid System is a convenient and cost-effective solution for registering trademarks in up to 130 countries by filing one application and paying one set of fees.

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Last update:

May 13, 2024


Company name:
Mori Hamada & Matsumoto

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