Plan trademark protection around the markets you will actually enter

Build a practical plan for target territories, eligibility, goods and services, filing and local examination.

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Start with the territories where the brand will actually need protection. Separate immediate sales markets from later expansion plans. The Madrid System provides a central filing route, but the domestic laws of each designated member determine the scope of protection. A single international registration is therefore not a blanket worldwide right.

Check eligibility before building a filing schedule. The applicant needs an eligible nationality, domicile or business connection with a Madrid member and an application or registration for a basic mark at that member’s IP office. Put the applicant, qualifying connection and basic mark details together in an eligibility worksheet.

Confirm the basic mark and Office of origin before preparing the international application. The basic mark is the foundation of the international registration. Gather the existing application or registration records and identify the responsible home office, so the filing team works from the actual records rather than only a proposed brand name.

Prepare the goods and services list with the people responsible for products and sales. Use WIPO’s tools to organise the wording and consider the items the business intends to cover. The list cannot be expanded after the international application is submitted, so make this a deliberate scope decision before filing.

Estimate fees from the selected members and classes instead of assuming a single worldwide price. WIPO’s fee calculator uses the target markets and number of classes. Keep the market list alongside the estimate and rerun the calculation when the scope changes; this connects the budget to what is actually being requested.

Submit through the Office of origin using its requirements. That office checks correspondence with the basic mark, certifies the application and forwards it to WIPO. Assign an internal contact to check the submitted version and contact details, keeping one traceable record for any later correction request.

Track formal and substantive examination separately. WIPO checks formal requirements and records the international registration; the designated offices then examine protection under their domestic laws. A registration certificate does not mean that every market has already accepted protection. Maintain a separate status and notification record for each territory.

Build a response checklist for notifications and provisional refusals. WIPO explains that a refusal notice includes reasons, response limits, further steps and any need for a local representative. Refusal in one member does not automatically affect others. Next, confirm the first markets, goods and services scope and the person responsible for responses.

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