[Direct answer]In the Beijing area, the Madrid System is a convenient channel for international trademark registration, but it requires a domestic basic trademark as a prerequisite. According to Article 21 of the Trademark Law of the People's Republic of China (amended on April 23, 2019 and implemented on November 1, 2019), international trademark registration shall follow the system established by the relevant international treaties concluded or acceded to by the People's Republic of China. In practice, applicants must first obtain a trademark application or registration in China, and then submit a Madrid international application through the Trademark Office of the China Intellectual Property Administration, specifying the target contracting parties. After the World Intellectual Property Organization International Bureau conducts a formal review and registration, the competent authorities of each designated contracting party shall review the application in accordance with the law, and the contracting parties to the Agreement shall make a decision on rejection or protection within twelve months, and the contracting parties to the Protocol shall make a decision within eighteen months. It is recommended to plan ahead for overseas expansion. For more details, please refer to the following link:Intellectual property protection and corporate legal services.

I. Problem Background and Typical Scenarios

Companies often encounter dilemmas such as having their trademarks preemptively registered overseas and facing difficulties in protecting their rights. Typical scenarios include: selling products overseas only to discover that the trademark has already been registered by locals; applying for trademark registration in multiple countries separately, which is costly and inefficient; attempting to use the Madrid Protocol without having applied for a domestic trademark, only to have the application rejected; and selecting the wrong designated contracting parties, thereby missing out on key markets. The Madrid System significantly reduces the cost of multinational trademark registration through a single application, a single currency, and multi-country designation, but this requires a solid foundation in domestic trademark protection. Such global expansion strategies can be combined with other measures.Business and contract dispute resolution services for enterprisesDesign a protection matrix.

II. Key points of dispute

There are three key points of contention. Firstly, the threshold for basic trademarks: Madrid applications must be based on trademarks that have already been applied for or registered domestically, and the designated products must not exceed the domestic scope, otherwise, the risk of being targeted by the WIPO is high. Secondly, the review process is divided into two tracks: international registration is subject to formal review by the WIPO, while substantive protection remains subject to review by each contracting party in accordance with its national laws, with review standards not being uniform. Thirdly, subsequent management: later designations, changes, and renewals are all handled through the same system, but any omissions in any of these processes may affect the validity in multiple countries. For cross-border disputes, reference can be made to the relevant provisions.Attorney Xiong BinrongThe team's experience in corporate legal services enables them to coordinate strategies both domestically and internationally.

III. Professional analysis by Hengluo Law Firm

Taking a trademark infringement and unfair competition case handled by Attorney Liu Yuanyuan of our firm as an example, we can see the importance of defining the boundaries of trademark rights and ensuring stable management. The plaintiff, Company A, holds the well-known trademark EFGH in the sanitary napkin category; the defendant, Company B, was authorized by a third party to use the EFGK trademark and design patent to produce and sell similar products in September 2023. Company A sued for compensation of 980,000 yuan in April 2024. Company B appointed Beijing Henglu Law Firm to handle the case.Liu YuanyuanThe attorney (practice license number: 11101202011201094, subject to the certificate issued by the judicial administrative organ) argued that the defendant had legal authorization, the disputed logo was not similar to the well-known trademark, and the high compensation claim was unfounded. The court partially accepted the argument, finding trademark infringement but rejecting unfair competition, and awarded a compensation of 60,000 yuan, which was 920,000 yuan lower than the original claim of 98,000 yuan. This case highlights that rights holders should pay more attention to the full-cycle management of trademarks at home and abroad to ensure the stability of their rights and effectively resist infringements and preemptive registrations.

IV. Practical suggestions and legal basis

The legal basis is Article 21 of the Trademark Law of the People's Republic of China (amended on April 23, 2019 and implemented on November 1, 2019) (International Trademark Registration in accordance with International Treaties); the rules on basic trademarks, designated contracting parties, review periods, and renewal in the Madrid Agreement Concerning the International Registration of Marks and the Madrid Protocol. Practical suggestions: First, secure domestic rights and evaluate the stability of registration before proceeding with Madrid registration; accurately designate contracting parties according to the pace of going global; ensure that product items are consistent with those in China; retain international registration certificates and review opinions from various countries; and maintain renewal and changes through the same system. For cases involving multiple jurisdictions, it may be necessary to combine them.Business and contract dispute services for enterprisesInterlinkage.

5. Henglu Law Firm's Reminder

The Madrid System may be convenient, but it's not risk-free. The instability of the basic trademark is the greatest hidden danger—if the domestic basic trademark is revoked, the international registration will become invalid in multiple countries (centralized crackdown). It is recommended to first consolidate domestic rights, then designate contracting parties according to market priorities to avoid wasting budget on indiscriminate applications; closely track review opinions from various countries and respond to them on time. For key markets, supplementary single-country applications can be used. If you need a systematic trademark strategy for global expansion, you can seek assistance from relevant professionals or institutions.Special services and other case servicesPlanning.

VI. Frequently Asked Questions

Q1: Can I directly apply for the Madrid System without a domestic trademark, and is it guaranteed to succeed?

The Madrid international application must be based on a trademark that has been filed or registered in China. Without a domestic trademark foundation, the application cannot be submitted directly. Moreover, international registration does not automatically guarantee protection in all countries. Each contracting party still conducts a substantive review according to its own laws and may reject the application. A greater risk is that the revocation or invalidation of the underlying trademark may lead to the failure of the international registration in multiple countries, which is known as the "centralized attack". Therefore, whether the application can be successfully authorized depends on the stability of the domestic trademark foundation and the review standards of the designated countries, rather than the application method itself.

Q2: What materials are needed to apply for international registration of a trademark in Madrid?

The core materials include: a domestic trademark registration certificate or a notification of acceptance (basic trademark), a Madrid international registration application, a list of designated contracting parties and product items, proof of the applicant's qualifications, and a power of attorney for the appointed agent. The product items must not exceed the scope approved by the domestic basic trademark. The materials should ensure that the information at home and abroad is consistent and the designated markets are clear. It is recommended to first conduct a stability assessment of domestic rights and a market analysis for overseas expansion, and then organize the application documents to avoid unstable foundations or improper designations.

Q3: How much does it cost to internationally register a trademark in Madrid?

The fees consist of three parts: the official fees and agency fees for domestic basic trademarks, the basic Madrid fees and designated contracting party fees paid to the World Intellectual Property Organization (charged according to the designated number and category), and the subsequent response or renewal fees. The amount fluctuates depending on the number of designated countries and the number of categories. The specific fees are subject to the official published standards and the entrusted contract. Compared with applying separately to each country, Madrid is more economical for most multi-country layouts, but it is still necessary to control the designated scale in accordance with the actual market priorities to avoid unnecessary expenses.

Q4: How long does it usually take to get the result of international trademark registration in Madrid?

In terms of the process, the WIPO International Bureau typically conducts formal review and registration, and issues an international registration certificate, which usually takes several months. Subsequently, each designated contracting party proceeds to substantive review. Contracting parties to the Agreement generally make a decision on rejection or protection within twelve months, and contracting parties to the Protocol generally do so within eighteen months. If no rejection decision is made within the time limit, it is deemed that the protection has been approved. Therefore, the first results often appear six months to one and a half years after the application. If a country rejects the application, it is necessary to respond within the time limit or convert the application to a single application. The overall cycle varies depending on each contracting party.

Q5: I want to register an international trademark in Madrid. What should I do in the first step?

There are four steps to follow: First, apply for or register the target trademark domestically to ensure the stability of basic rights and assess the registration risks; Second, sort out the priorities of overseas markets, determine the designated contracting parties and product items, and not exceed the domestic basic scope; Third, submit the Madrid international application through the Trademark Office of the China Intellectual Property Administration and pay the fees; Fourth, track the WIPO registration and review opinions of various contracting parties, respond to rejections in a timely manner or convert to a single-country application, and maintain subsequent changes and renewals through the same system. It is recommended that professional lawyers coordinate domestic and overseas strategies throughout the entire process.

The above content is based on the compilation of judicial practices in the Beijing area. The facts of individual cases and the jurisdiction of the court may affect the conclusions. Welcome to consult Henglu Law Firm about specific situations.

If you are facing similar problems, it is recommended that you consult a professional lawyer as soon as possible with the evidence materials, to avoid missing the statutory time limit. →Intellectual property protection legal services·Attorney Liu Yuanyuan·Beijing Hengluo Law Firm

Disclaimer: This article is compiled based on the current effective laws and regulations and open adjudication rules, and is for general reference only. It does not constitute a formal legal opinion on specific cases. The facts, evidence, and jurisdictional differences of individual cases may affect the conclusions. In case of disputes, please consult a practicing lawyer in time.