What is the Madrid System for trade marks?

The Madrid System allows you to file a trade mark in a signatory country and then provides the opportunity for the applicant to file multiple trade mark applications in other signatory countries through one additional application.

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Is it expensive?

The basic fee for using the Madrid System is 653 CHF ($5129 TTD/$755 USD) for black and white marks or 903 CHF ($7093 TTD/ $1044 USD) for marks in colour. There are additional costs depending on which countries you designate and the number of classes you register your mark for.

It can be worth considering the local fees of the country you are designating. For example, filing directly in the UK costs around £170 directly for one class of goods/services, whereas the fee is £180 (plus the administrative Madrid System fee) when using the Madrid System. By contrast, the US has a much higher fee via the Madrid System than if filed locally. It is $250 USD to file internally in the US compared to $531 USD through the Madrid System.

You can determine the costs of a Madrid System filing here.

Please note that this is the cost to use the Madrid System only. Applicants will incur additional fees if intellectual property expertise is needed for the filing of the applications. It is strongly recommended that applicants consult with their specialty intellectual property lawyer or consultant.

*Fees correct at the time of writing.

Why would I use the Madrid System when it can potentially cost more because of the administrative fee and sometimes higher country fees?

The main benefit of using the Madrid System is the ability to file one set of online paperwork in order to gain access to multiple trade mark registrations, if successful. Whereas if you make individual filings in each country, you will have to fill out individual local applications, which can vary in form and practice. Furthermore, some Intellectual Property Offices do not currently permit online applications.

The Madrid System also provides a potential ‘loophole’ to circumvent some of the local requirements discussed below.

Are there benefits to filing individual applications in each country instead of using the Madrid System?

This depends on the filing requirements of the country(s) you are interested in. If you are only interested in countries that allow online filing without local representation and without a local address, then individual applications can work and could potentially be more time and cost effective.

Why do I need trade marks in different countries if I have one in Trinidad and Tobago?

Trade marks are territorial. A trade mark in Trinidad and Tobago is only valid within the country. Therefore, if you want a trade mark in Barbados for example, you need to register there.

I am interested in the US and the UK. What do I need to know?

UK

In the UK, you can file a domestic application if you have a UK address. This address will be used if you receive an opposition at the UK Intellectual Property Office. Someone must be able to receive and sign for objection/opposition papers.

This requirement also applies for UK requests made via the Madrid System.

US

In the US, you can file a domestic application yourself if you have a US address and social security number. If you do not have these, you will need to be represented by a US attorney.

Potential loophole to these requirements?

If you use the Madrid System, there is a possibility that your trade mark will be successfully filed which means neither of the aforementioned formality requirements will be necessary (in the US/UK). However, it is important to be aware of these requirements because each Intellectual Property Office conducts their own search and each country has their own trade mark law. This means, a successful registration in Trinidad and Tobago does not guarantee a successful registration elsewhere. Moreover, if your application encounters any problems, you will likely need to get a lawyer in that jurisdiction.

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