One application, one language and one renewal date across more than 130 countries. The Madrid System is the most efficient route to multinational trade mark protection, but the balance of advantage across the Caribbean and Latin America deserves closer examination than the headline efficiency suggests.
In an increasingly globalised economy, businesses of all sizes seek to expand their brands beyond national borders. As companies enter new markets, protecting trade marks internationally becomes a critical component of their intellectual property strategy. One of the most effective mechanisms for obtaining multinational trade mark protection is the Madrid Protocol, formally known as the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks. Administered by the World Intellectual Property Organization (WIPO), the Madrid Protocol offers a streamlined and cost-effective system for securing trade mark rights in multiple jurisdictions through a single application.
How the Madrid System works
The Madrid Protocol was adopted in 1989 to modernise and improve the original Madrid Agreement of 1891. Today, the Madrid System covers more than 130 countries through over 115 member jurisdictions, representing the vast majority of global trade. The system enables trade mark owners to file one international application, in one language and through a single administrative process, to seek protection in multiple member countries.
To use the Madrid System, an applicant must first possess a national trade mark application or registration in a member jurisdiction, commonly referred to as the “basic mark.” The applicant then files an international application through the trade mark office of origin, which forwards the application to WIPO. Once WIPO conducts a formal examination and records the mark in the International Register, the application is transmitted to the designated member countries for substantive examination under their respective national laws.
The principal advantage: centralised filing and management
The principal advantage of the Madrid Protocol is efficiency. Instead of filing separate trade mark applications in each country, applicants can centralise the process through a single filing, one set of fees, and one renewal date. Furthermore, subsequent modifications—such as changes of ownership, name, or address—can be recorded centrally through WIPO, significantly reducing administrative costs. This makes the system particularly attractive for companies seeking regional or global brand protection.
Madrid Protocol membership across the Caribbean and Latin America
The Madrid Protocol has gained substantial acceptance throughout the Caribbean and Latin America over the past decade. Current members in the region include Brazil, Chile, Colombia, Cuba, Mexico, Antigua and Barbuda, Belize, Jamaica, Trinidad and Tobago, and Grenada. Among the region’s largest economies, Mexico joined the Protocol in 2013, Colombia in 2012, Brazil in 2019, and Chile in 2022. Their accession has strengthened the attractiveness of the system for businesses seeking trade mark protection across the Americas.
Central attack: the five-year dependency period
Despite its many advantages, the Madrid Protocol is not without limitations. One of its most significant disadvantages is the dependency on the basic application or registration during the first five years after the international registration is granted. If the basic mark is cancelled, restricted, abandoned, or successfully challenged during this period, the international registration may be affected to the same extent. This vulnerability, known as a “central attack,” can jeopardise trade mark protection in all designated countries simultaneously.
No universal trade mark: national examination still applies
Another limitation is that the Madrid Protocol does not create a universal trade mark. Each designated country retains the authority to examine applications according to its own national laws and procedures. As a result, an international registration may still face objections, refusals, or opposition proceedings in individual jurisdictions. Trade mark owners often need to engage local counsel to respond to office actions or defend their applications, resulting in additional costs and complexity.
Where Eproint adds value
Eproint, with more than 26 years of experience in the Caribbean and Latin America, offers a great deal of added value to the clients when Madrid Protocol trade mark applications are filed. As mentioned before, Brazil, Chile, Colombia, Cuba, Mexico, Antigua and Barbuda, Belize, Jamaica, Trinidad and Tobago, and Grenada are party members of the Protocol. In these countries we have the know-how to counsel the clients with their application and get through the office actions, oppositions and other obstacles issued by the local offices or third parties.
When direct national filing is the better route
The system may also be less advantageous for businesses seeking protection in only a small number of countries. In some cases, direct national filings may provide greater flexibility or lower overall costs, particularly when only one or two foreign jurisdictions are involved. Furthermore, the fee structure can become expensive when numerous countries are designated or when individual fees imposed by certain member countries are added.
The case for Madrid in the region
For businesses across the Caribbean and Latin America, however, the advantages of the Madrid Protocol generally outweigh its disadvantages. Exporters, technology companies, manufacturers, and service providers can secure trade mark protection in major commercial jurisdictions such as the United States, the European Union, China, Japan, and many other countries through a single procedural framework. Likewise, foreign investors entering regional markets benefit from a more predictable and efficient mechanism for protecting their brands throughout the region.
A question of balance among member states
Although this may be true, we must question if there is a balanced advantage among the Union parties regarding the number of businesses that may really benefit from this system. As said above, countries like the United States, the European Union, China, Japan and other developed countries have hundreds of companies that develop and export intellectual property, but the same does not happen with developing countries, particularly in the Caribbean and Latin America, where the number of companies exporting their goods abroad are few and are not entirely interested in all the markets members of the Protocol. Therefore, it may be expensive to file and protect through this international mechanism, and moreover, it may be also expensive to enforce the trade mark abroad as well.
Non-member jurisdictions and the hybrid filing strategy
Another practical concern is that not all countries are members of the Madrid Protocol. Businesses seeking protection in non-member jurisdictions must still pursue separate national or regional applications. Consequently, international trade mark strategies often require a combination of Madrid filings and direct national filings. While applicants should carefully consider its limitations, including the risks of central attack, national refusals, and additional local costs, the Madrid System remains one of the most valuable tools available for obtaining and managing international trade mark rights in multiple jurisdictions. Eproint, as a regional firm in the Caribbean and Latin America, handles both systems, adding value to the client in their strategy to protect and enforce their trade marks.
About the author
Carlos Corrales Azuola is a Partner at Eproint in Costa Rica, with over 30 years of experience in intellectual property and corporate law. He holds an LL.M. in Intellectual Property from the Franklin Pierce School of Law at the University of New Hampshire and advised Costa Rica’s Ministry of Foreign Trade on free trade agreement and bilateral investment treaty negotiations. He is a co-founder and past president of the Costa Rican Association of Intellectual Property Professionals (APPICR), lectures on the intellectual property master’s programme at UNED, and is an active member of INTA, ASIPI, AIPLA and APRAM. He works in four languages and maintains close ties to WIPO.
Contact: ccorrales@eproint.com
FAQ
It is an international treaty administered by WIPO that allows a trade mark owner to seek protection in multiple countries through a single application, filed in one language, with one set of fees and one renewal date. It covers more than 130 countries through over 115 member jurisdictions.
Brazil, Chile, Colombia, Cuba, Mexico, Antigua and Barbuda, Belize, Jamaica, Trinidad and Tobago, and Grenada. Mexico joined in 2013, Colombia in 2012, Brazil in 2019 and Chile in 2022. Most jurisdictions in the region remain outside the system, so direct national filings are still required there.
During the first five years after an international registration is granted, it remains dependent on the basic national application or registration. If the basic mark is cancelled, restricted, abandoned or successfully challenged in that period, the international registration may fall to the same extent in every designated country simultaneously.
No. The Madrid Protocol does not create a universal trade mark. Each designated country examines the application under its own national law, and the mark may still face objections, refusals or oppositions locally, which usually require local counsel to resolve.
Not always. Where protection is sought in only one or two foreign jurisdictions, direct national filings may offer greater flexibility and lower overall cost. Fees also rise sharply when many countries are designated or when member states impose individual fees.
Eproint has more than 26 years of experience across the Caribbean and Latin America and handles both routes. In the Protocol member countries of the region, the firm advises on the application and responds to office actions, oppositions and other obstacles raised by local offices or third parties; in non-member jurisdictions it files directly, so a single strategy covers the whole region.
