International Trade Marks: WIPO Filing – Frequently Asked Questions

What is a WIPO trade mark application?

The WIPO (World Intellectual Property Organisation) trade mark system, also known as the Madrid Protocol System, allows you to apply for trade mark protection in multiple countries using one international application.

This system simplifies the process of protecting your brand in up to 130+ countries that are party to the Madrid Protocol.

Can any company file through WIPO?

To file through WIPO, your company must have a real connection to a country that is a member of the Madrid Protocol.

For example (with certain exceptions):

• A UK company must use its UK trade mark as the “basic” mark.
• A US company must use its US application or registration as the basis.

What are the main benefits of filing through WIPO?

• Lower costs: Filing via WIPO is usually more cost-effective than filing directly in each country, especially if you are targeting several (5+) markets.
• Easier management: You can manage renewals, ownership updates, and address changes through a single system.

Are there risks involved in using WIPO?

Yes. There are a few important risks to be aware of:

• Dependency on the “basic” mark: For the first 5 years, your international registration depends entirely on the home (basic) application or registration. If it is cancelled, refused, or expires, the entire WIPO registration and all individual designations will be cancelled too.
• No automatic local updates: WIPO will not inform you about country-specific obligations (e.g., proof of use deadlines), so it’s essential to work with local agents.
• Limited ownership transfer options: You can only assign a WIPO trade mark to someone who also has a connection to a Madrid Protocol country.

What happens if the basic mark is cancelled or refused?

If your basic mark is cancelled, refused, or expires within the first five years, the international registration — and all the countries you designated — willy also be cancelled.

You can apply to transform the designated marks into national applications in each country. However, there is a strict 3-month deadline, and the process can be expensive and time-consuming.

Do I need local agents in each country?

Yes — we strongly recommend appointing a local trade mark agent after registration in each designated country.

Some jurisdictions require post-registration actions, such as providing proof of use (e.g. in the US, Mexico or the Philippines). WIPO does not remind you of these obligations, and a local agent can help you avoid missing deadlines or risking cancellation.

Do I always receive a trade mark certificate/other documentary proof of protection?

Not always. Some countries (for example, China) do not issue a separate certificate for WIPO designations. However, in some cases you may still need a certificate — for example, to enforce your rights locally or to obtain regulatory approval of your products.

What if a country grants protection by default without examination?

In certain jurisdictions, if the local trade mark office does not respond within the official timeframe, the trade mark is automatically granted. This is common in some Middle Eastern and African countries.

These registrations are legally valid, but their enforceability may be uncertain — especially in legal disputes, customs actions, or regulatory contexts. You also may not receive any formal certificate of registration.

Is WIPO right for every business?

Not always. The WIPO system is very efficient when you need protection in many countries at once (10+) and your basic (home) trade mark is strong.

But in some cases — especially if you are targeting only a few countries — filing directly may be the better choice.

How can we help?

We can assess your goals and advise on whether the WIPO system is suitable for your situation. If it is, we will guide you through the process and help you manage your registrations worldwide — including local follow-up, if needed.

Feel free to contact us if you’re considering international trade mark protection or want to review your current strategy.