An international registration obtained through the Madrid System is often misunderstood as a "global trademark certificate." In fact, it is merely a procedural record registered with the International Bureau of WIPO; whether protection exists is decided separately by each designated member in accordance with its own law. At the same time, an international registration is not an independent right during its first five years—it depends on the domestic basis. This is the central attack system. Understanding these two points is essential to correctly assessing the effect and risks of international registration.
The Effect of International Registration
- Procedural credential: the international registration certificate, issued by the International Bureau of WIPO, serves to prove that the international registration has been recorded and published in the International Trademark Gazette; it is not itself proof of approval by any country;
- Substantive rights come from the designated members: each designated member examines the application under its own law within the period prescribed by the treaty; where no refusal notice is issued, the international registration enjoys the same protection in that member as a national registration;
- Single registration number: all designated members share one international registration number, and renewal, changes, and assignment can be handled centrally through the International Bureau;
- Term of protection: counted from the date of international registration and renewable upon expiry.
The Central Attack Mechanism
Article 6 of the Madrid Protocol provides that, for five years from the date of international registration, the effect of the international registration depends on the basic application or basic registration in the office of origin. During this period:
- Where the basic application is refused or withdrawn, or the basic registration is declared invalid, cancelled, or renounced;
- The office of origin notifies the International Bureau of WIPO to cancel the international registration;
- The international registration lapses in whole or in part, and the corresponding protection in each designated member is extinguished accordingly.
Once the five-year period expires, the international registration decouples from the basis in the country of origin and becomes an independent right; subsequent invalidation of the basis generally no longer affects it. The purpose of this design is to make international registration and domestic examination mutually restraining, preventing circumvention of national procedures to obtain multinational protection.
Transmission Path and Common Triggers
Invalidation of the domestic basis is transmitted via the office of origin to the International Bureau of WIPO, which cancels the international registration and notifies each designated member, whereupon the protective effect is extinguished. The registrant is passive throughout this process.
The most easily overlooked trigger is cancellation of the basic registration for non-use for three consecutive years: a defensive registration left idle for years hands opponents precisely the opportunity to attack the basis. Maintaining continuous evidence of use of the domestic basis is therefore the prerequisite work for protecting an international registration.
The Transformation Procedure
The Madrid Protocol also provides for transformation: within a prescribed period after the international registration is cancelled due to lapse of the basis, the registrant may file national or regional applications for the same trademark and the same goods with the originally designated members one by one, claiming retention of the original international registration date and priority. The precondition for transformation is timely action—delay forfeits the chance to claim the original dates; transformation must be conducted country by country, with fees paid country by country and local agents engaged, making it costlier than the original international registration.
Response Strategies
- Time the filing: submit the international application after the domestic basis has passed substantive examination or been approved, clearing the risk of refusal of the basis in advance;
- Maintain the basis: use the mark in a standardized way and preserve evidence; actively respond to opposition, invalidation, and cancellation proceedings targeting the domestic basis;
- Dual track in key markets: run single-country or regional registrations in parallel in core markets such as the United States and the EU as a hedge against the central attack;
- Align the scope of goods: keep the goods designated in the international registration as consistent as possible with the domestic basis, avoiding scope disputes in case of partial cancellation;
- Expiry management: confirm the independent status of the international registration when the five-year period expires, and update the trademark ledger and renewal reminders accordingly.
How these concepts apply in specific cases still involves detailed differences; you may consult a registered agent via MyTMBee for case-specific analysis.