Success with Madrid international registration hinges on three things: whether the home basis is stable, whether the international application is strictly consistent with the basis, and whether the designation portfolio is precise. This guide walks through the operating points and pitfalls of each step in the order of "before — during — after filing."
1. Before Filing: Eligibility Self-Check and Basis Preparation
Applicant eligibility (any one of the following suffices):
- Having a real and effective industrial or commercial business establishment in China;
- Having a domicile in China;
- Having Chinese nationality.
Preparing the basic application/registration:
- File a Chinese trademark application first; once you have the filing receipt, you are eligible to file Madrid;
- It is strongly recommended to wait until the home application passes substantive examination (enters preliminary approval publication) before filing the international application — clearing refusal risk and minimizing central-attack exposure;
- The goods/services of the basic application should cover your future overseas layout needs; the international application can only narrow, never broaden, that scope;
- Keep the applicant name and address consistent once determined; later changes are possible but add cost for nothing.
Designing the designation list:
- List the markets you will actually enter in the next 2–3 years, tiered as "core — follow-up — watchlist";
- Designate core countries now and leave watchlist countries for subsequent designation, avoiding overpaying in one go;
- Confirm each target country is a Madrid member (check the WIPO website); non-members (e.g., some Middle Eastern countries) require separate national registration;
- Use the WIPO Madrid Fee Calculator to estimate total cost; individual-fee countries (US, Japan, Korea, etc.) are the big-ticket items.
2. During Filing: Submission and Formal Examination
Filing channel:
- File form MM2 (completed in English) through the online service system of the CNIPA Trademark Office;
- Paper filing is available for French/Spanish needs or other special situations, but e-filing is the mainstream;
- Engaging an agency recorded with CNIPA is the more prudent option.
Key completion points:
- The mark representation must be identical to that of the basic application; a color mark requires a color claim and a higher basic fee (CHF 903 vs. CHF 653 for black-and-white) — black-and-white is generally recommended for maximum flexibility of use;
- Goods/services are selected or narrowed from the scope of the basic application, and can be adjusted per designated country (e.g., trimmed to the goods you actually deal in for the US);
- To claim priority (within six months of the home filing date), tick the box and fill in the basic application details;
- Pay the fees: basic fee + supplementary/individual fees for each designated country + the transmittal fee of the Chinese office.
Examination timeline:
- Formal examination by the Chinese office and transmittal to WIPO: about 1–2 months;
- Formal examination by the WIPO International Bureau: about 2–4 months, after which the registration is recorded, the international registration certificate issued, and the mark published;
- Substantive examination by each designated country: Agreement countries decide within 12 months and Protocol countries within 18 months whether to refuse; silence means protection is granted by default.
Note: the international registration certificate is only a procedural document — real protection depends on each designated country not refusing.
3. After Filing: Refusal Response and Day-to-Day Management
Handling provisional refusals:
- A refusal by one designated country does not affect the others; respond country by country;
- Upon receiving the refusal notice transmitted by WIPO, check the response deadline immediately (usually 2–4 months) and engage a local agent in that country to respond;
- Goods-description issues (most common in the US) are fixed by amending as required; similarity and distinctiveness issues need case-by-case argument;
- If the country is unimportant, you may forgo responding to save costs.
Risk management during the 5-year dependency period:
- Maintain the home basis: use the mark properly, keep evidence to defend against non-use cancellation, and actively respond to invalidation and opposition;
- If the home basis runs into crisis, evaluate whether to initiate "transformation" for core designated countries (within three months of cancellation of the international registration, it can be converted into national applications preserving the filing date);
- After five years, the international registration becomes independent and the risk is lifted.
Ongoing management:
- Subsequent designation: when entering new markets, file form MM4 with WIPO to add designated countries — no new application needed;
- Changes/assignment: changes of name/address and assignments are handled once through the International Bureau and take effect for all designated countries;
- Renewal: renew centrally through WIPO before each 10-year term expires;
- Status monitoring: use WIPO Madrid Monitor to track examination progress and legal status in each designated country.
4. Common Failure Scenarios and Countermeasures
- Basic application refused, international registration falls with it → file after substantive examination passes, or dual-track national registration in core countries;
- Goods copied verbatim from the Chinese description, refused in the US → rewrite in USPTO-acceptable wording in advance; draft goods separately when designating the US;
- Forgetting to designate the UK → the EU no longer covers the UK after Brexit; any European layout must include the UK;
- Missing the refusal response deadline → set WIPO notification emails to high priority and engage an agent for unified deadline monitoring;
- Thinking the international registration certificate equals grant in every country → keep watching each country's examination outcome; only a "statement of grant of protection" counts as landing.
5. Cost Estimate Reference
Designating five jurisdictions — the US, EU, UK, Japan and Australia — as an example: the CHF 653 basic fee + the US individual fee + the EU supplementary fee + the UK supplementary fee + the Japan individual fee + the Australia supplementary fee totals roughly CHF 3,000–4,500 (excluding the Chinese office's transmittal fee and agent fees), still significantly below the sum of country-by-country filings. Refer to the WIPO fee calculator for real-time figures.
6. Where to File
If you need the matters above handled, you can submit a US trademark registration application at MyTMBee, where a registered agent will follow it through.