The 5 Hidden Risks of Relying on the Madrid System (and How to Avoid Them)

The Madrid System is often presented as the simplest and most cost-effective way to secure trade mark protection in many countries through one application. In many cases this is true, and for a lot of UK businesses it is a very good starting point. However, in practice we regularly see a number of problems that are not immediately obvious to brand owners when they first choose this route.

Below are five issues that come up most often, together with some practical steps to avoid them.

1. The 5-Year Dependency on the Basic Mark

During the first five years, the entire International Registration depends on the “basic” UK application or registration. If the basic mark is refused, cancelled, invalidated, or simply allowed to expire, all designations under the International Registration will be cancelled as well.

If this happens, the only way to keep protection is to file national applications in each affected country through a process called “transformation”. This is usually slow, costly, and quite administrative-heavy. In some jurisdictions, transformation requests remain pending for years.

How to avoid it:

Where possible, use a registered UK mark as the basic mark rather than a pending application. Also ensure that the basic mark is renewed when due.

2. Local Maintenance Requirements Are Not Covered by WIPO

A number of countries require owners to file evidence of use or other maintenance documents several years after registration. These deadlines are not monitored by WIPO and no reminders are issued. If the deadline is missed, the designation may be cancelled.

This issue often arises in countries such as Mexico and the Philippines.

How to avoid it:

Appoint local agents in each designation as soon as registration is granted, and keep a central diary of maintenance deadlines.

3. Assignment Restrictions

Only owners with a link to a Madrid Protocol member country can hold an International Registration. This means that an IR cannot be assigned to a company based solely in a non-member country. We see this problem regularly when groups restructure or move IP to holding companies in non-member jurisdictions.

How to avoid it:

Before any assignment, check whether the new owner qualifies. If not, you may need to assign only the relevant national registrations or consider alternative structuring.

4. Limited Local Certificates and Practical Enforcement Issues

Some countries (for example China) do not issue a local certificate for Madrid designations. Others require a certificate for customs, enforcement or regulatory work. A WIPO extract is sometimes accepted, but not always.

How to avoid it:

Check local certificate requirements in advance and consider filing a national application in enforcement-heavy jurisdictions.

5. Default Grants in Countries with Weak Implementation

In several Middle Eastern and African countries, protection is sometimes granted simply because the local office did not respond in time. Although formally valid, such rights may be difficult to enforce in practice and may not appear on the local register.

How to avoid it:

Take local advice before designating these jurisdictions, especially where enforcement is important.

The Madrid System remains a very useful tool, but it is not entirely risk-free. Understanding these limitations early on makes international protection far more reliable and cost-effective.

If you’d like tailored advice on whether Madrid is the right route for your global filing strategy, we would be happy to help.