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Frequently Asked Questions

Madrid Protocol – FAQs

General Questions

The Madrid System is an international framework that allows trademark owners to register and manage their marks across multiple jurisdictions through a single application.

By filing one application and paying one set of fees in one currency, applicants can seek protection in numerous member countries simultaneously. The system also enables centralised management of renewals, expansions, and modifications through the eMadrid online platform.

Eligibility extends to nationals of any Madrid System member, as well as individuals or entities with a domicile or genuine business establishment in a member jurisdiction.

Applicants must already hold, or have applied for, a national or regional trademark registration, known as the basic mark, through their home IP office, referred to as the Office of Origin. Malaysia became the 106th Madrid Protocol member on 27 September 2019, so Malaysian applicants can use MyIPO as their Office of Origin.

The basic fee is 653 Swiss francs for a mark in black and white, or 903 Swiss francs for a mark in colour.

Additional fees apply depending on the designated countries and the number of classes of goods and services covered. A cost estimate can be obtained through the Madrid System Fee Calculator available on eMadrid.

No. The Madrid Protocol streamlines the application process, it does not grant the trademark owner global trademark protection.

Each designated jurisdiction still conducts its own substantive examination and may grant or refuse protection. Successful registration through Madrid simply means you have a basket of national rights administered through a single international registration.

How It Works

  1. The applicant (registered proprietor of the basic mark) prepares an international application.
  2. The application is filed with the Office of Origin (MyIPO, for Malaysian applicants).
  3. The Office of Origin reviews, certifies, and forwards the application to WIPO.
  4. WIPO conducts a formal examination on classification, image quality, and fees.
  5. WIPO registers the mark in the International Register and publishes it in the WIPO Gazette.
  6. WIPO issues the holder with a Certificate of Registration.
  7. WIPO notifies each designated Contracting Party.
  8. Each designated jurisdiction conducts substantive examination.
  9. Each office grants or refuses protection, typically within 12–18 months.

An international registration is valid for 10 years from the date of registration and may be renewed indefinitely.

WIPO issues a renewal reminder six months before expiry.

Filing an International Application

Applications are prepared using the Application Assistant on eMadrid. Once the Office of Origin is identified, the platform indicates the filing options available.

Where supported, the application may be submitted entirely online through Madrid eFiling or the Office’s own digital system. Otherwise, the completed form should be downloaded as a PDF and forwarded to the Office of Origin for certification.

Applicants designating the United States must additionally complete Form MM18 declaring intent to use the mark.

The Office of Origin first verifies that the application corresponds to the basic mark, then certifies and forwards it to WIPO. WIPO checks formal requirements such as classification, image quality, and fee payment.

Upon approval, the mark is entered into the International Register, published in the WIPO Gazette, and a Certificate of Registration is issued. Each designated jurisdiction then conducts substantive examination and issues a decision granting or refusing protection, typically within 12 to 18 months.

The status of an application or registration may be monitored in real time through Monitor your Registration on eMadrid.

Records may be searched by brand name or International Registration Number, and updates appear under the Real-time Status tab. The Designation Status tab provides a quick overview of decisions issued by each designated jurisdiction, with options to download status summaries or order certified documents.

Advantages & Disadvantages

  • Expanding coverage, protection grows as more countries join.
  • Smoother administrative process, simplification speeds up turnaround time.
  • Fixed examination period, designated offices have 12 or 18 months to issue a refusal, otherwise protection is automatic.
  • Cost effective, no need for translation, local representatives, or multi-currency fee handling.
  • Easier renewal management, renewals are paid once every 10 years.
  • 5-year grace period for proof of use in countries that require it.
  • Subsequent designations, expand to new markets at any time.
  • Simplified post-registration, centralise changes of name, address, ownership and goods.
  • Not available for non-member countries, e.g. Hong Kong and Taiwan are not Madrid Protocol members.
  • Dependency on the home registration, if the basic mark fails in the first 5 years, all designations may fall (central attack risk).
  • Faster national routes exist in some countries that finalise registrations within 12 months.
  • Local agent costs may negate savings if a designated office issues a refusal.
  • Cheaper to file nationally if only one or two countries are targeted.
  • Inconsistencies in protection, some courts give Madrid-registered marks lesser standing in disputes.
  • Limited flexibility, the mark and specification must be the same in every designated country.
  • Ownership transfer restrictions, you cannot transfer to a resident of a non-member country without first withdrawing from the system.

For the first five years after international registration, the international registration depends on the basic Malaysian mark.

If the basic mark is cancelled, withdrawn or refused during this period (e.g. through a successful opposition or revocation action in Malaysia), all designations under the international registration fall with it. After year 5, the international registration becomes independent of the basic mark.

Managing Your Registration

Active registrations may be tracked through Monitor your Registration on eMadrid.

The platform provides real-time updates, designation-level outcomes, and access to electronic notifications. Status summaries and certified documents may also be downloaded directly through the portal.

Yes. Each designated jurisdiction conducts its own substantive examination and may issue a provisional refusal within 12 months, or 18 months in certain cases.

Refusal in one jurisdiction does not affect protection granted by others. If no refusal is issued within the applicable time limit, protection is deemed granted within that territory for the goods and services specified.

Procedures for responding vary by jurisdiction and are handled directly between the applicant or local representative and the relevant IP office, without WIPO involvement.

The refusal notice will specify the grounds, the response deadline, the appeal authority, and any requirement to appoint local counsel. The Madrid System Member Profiles on eMadrid provide detailed information on each jurisdiction’s procedures.

Yes. Common amendments include:

  • Expanding protection to additional countries or classes of goods and services.
  • Recording a change of ownership.
  • Renouncing protection in selected jurisdictions.
  • Cancelling the registration.

All such changes may be managed centrally through eMadrid.

An international registration is valid for 10 years and may be renewed indefinitely. WIPO issues a renewal reminder six months before expiry.

Renewal may be filed through Renew your Registration on eMadrid, either within six months before expiry or within the six-month grace period thereafter. Late renewal during the grace period attracts a surcharge.

Yes. Ownership may be transferred in whole or in part through the Change Ownership function on eMadrid.

A partial transfer may cover selected goods and services in selected designated jurisdictions, providing flexibility in commercial transactions and corporate restructuring.

Replacement allows an existing national or regional registration to be automatically replaced by a subsequent international registration that designates the same jurisdiction, while preserving the earlier date of protection.

This enables holders to consolidate management of their trademark portfolio centrally and, where desired, allow earlier national registrations to lapse without losing seniority.

Certified Documents

Yes. Legalisation of an attestation is available, with fees equivalent to those for the legalisation of extracts.

No. A separate request must be submitted for each international trademark registration.

Yes. Certified documents are generally issued in PDF format, except those requiring legalisation. Paper copies remain available upon request.

No. A reissued copy is identical to the original certificate and will not reflect subsequent changes.

To confirm updated particulars, an attestation should be ordered instead.

No. The certificate is issued in the language of the original international trademark registration, which is English, French, or Spanish.

No. Certified copies are restricted to the holder or representative.

However, a detailed certified extract, which includes copies of all certificates, may be ordered by other parties.

Direct copies of older certificates are not available. A detailed certified extract should be requested instead, which will reflect the full registration history.

It may remain valid, but a new extract is recommended where there is any possibility of subsequent changes such as change of ownership, additional designations, or further decisions, in order to ensure the document is current.

Yes. Both the certificate of registration and the renewal record are always included in a detailed certified extract.

No. A detailed certified extract covers all designated jurisdictions.

To confirm the status of protection in a specific jurisdiction, an attestation should be ordered instead.

Translation of the extract itself is not provided.

However, a simple extract may be issued with a cover page and signature page in Arabic, Chinese, English, French, Russian, or Spanish. Notifications remain in the official language of the issuing national or regional IP office.

The information provided is intended as general guidance only. Applicants are encouraged to consult a registered IP agent for advice tailored to their specific commercial objectives and jurisdictional considerations.

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