Madrid Protocol: extending Swiss trademarks internationally

What the Madrid System is and who runs it

The Madrid System is an international trademark system governed by the Madrid Protocol (1989) and the Madrid Agreement Concerning the International Registration of Marks (1891), both administered by the World Intellectual Property Organization (WIPO), a specialised agency of the United Nations. Member countries and regional organisations (such as the European Union) allow applicants to file a single international application for protection in multiple territories at once.

Switzerland has been a member of the Madrid Protocol since 2004 and is fully integrated into the System. A Swiss applicant files through the Swiss Federal Institute of Intellectual Property (IPI), which acts as the office of origin and forwards the application to WIPO's International Bureau. WIPO then processes the application and coordinates with the trademark offices of each designated country.

The requirement of a basic Swiss mark

The Madrid System requires a base mark: either a Swiss national trademark registration already granted by the IPI, or an application for a Swiss mark filed with the Institute and still pending. The international application must show that the basic mark exists and must specify the same goods and services (or a subset of them) that are covered by the Swiss mark.

This dependency on a Swiss base mark is structural and absolute. There is no way to file an international application without it, and the base mark must remain valid to keep the international registration secure. If the Swiss mark is abandoned or cancelled, the international protection may also be lost—a risk known as central attack, discussed below.

The Swiss Federal Institute's role as office of origin

The Swiss Federal Institute of Intellectual Property is the applicant's point of first contact. The Institute receives the international application, checks that the goods and services listed in the international application are contained within the Swiss basic mark's specification, verifies the applicant's identity, and forwards the complete file to WIPO. The Institute also receives and communicates any official communications from WIPO to the applicant, and publishes the international registration in the Swiss trademark register once WIPO grants it.

The Institute does not examine or approve the mark for the designated countries; that is WIPO's role and the role of each designated country's own office. But the Institute's initial vetting of the base mark is a necessary gate-keeping function: WIPO will only accept an international application if the base mark is valid in Switzerland.

Designating member countries and regional organisations

The Madrid System includes over 130 member countries and the European Union as a regional organisation. An applicant can designate any of these for protection in a single international application. The applicant simply lists the countries or organisations desired and pays the corresponding fees to WIPO.

Costs scale with the number of designations. WIPO charges a base fee plus individual designation fees for each country or region. For example, designating the United Kingdom, Germany, France and Australia would incur fees for each. An applicant should designate strategically: filing for every country is expensive and rarely necessary; instead, the designation list should match the business's actual or planned geographic footprint.

Once the international application is filed, WIPO publishes the mark in its International Register and notifies the trademark office of each designated country. Those offices then examine the mark under their own national laws.

What central attack means and why it matters

Central attack is a unique vulnerability of the Madrid System. It refers to the risk that if the basic Swiss mark is cancelled, abandoned, or ceases to have effect during a defined period after the international application was filed, the entire international registration may be cancelled as well, even though the mark may already be registered in many other countries.

Example: a Swiss applicant files for a Swiss mark and immediately files an international application covering Germany, France, and the United States. Two years later, the Swiss mark is cancelled due to non-use by the Swiss trademark office. If this cancellation occurs within the central attack period, WIPO may cancel the international registration in all three designated countries, even if the mark was actively used and registered there. The strength of the international protection depends on the ongoing validity of the Swiss base.

This risk is strongest when the Swiss mark is weak (descriptive, not actively used, or subject to cancellation) or when it is challenged. A strong, actively used, and well-maintained Swiss mark carries far less central attack risk. Applicants should ensure their Swiss mark is properly registered and used before filing internationally, and should continue using and maintaining it throughout the period when central attack is possible.

How a refusal in one country affects the rest

A trademark office in a designated country may refuse the mark if it conflicts with an earlier registered or applied-for mark, or if it fails absolute-grounds examination (such as being merely descriptive or misleading). If one country refuses the mark, the refusal affects only that country—the international registration remains valid in all others.

For example, if Germany's trademark office refuses the mark because a similar earlier mark exists there, the mark remains registered in France, the United Kingdom, and every other designated country. The applicant can appeal the German refusal through Germany's administrative or court process, withdraw the German designation, or accept the refusal and proceed with protection elsewhere. The refusal does not contaminate the international registration itself.

This isolation of refusals is one reason the Madrid System is attractive: a single poorly timed conflict in one country does not destroy the entire international protection. However, applicants should clearance-search each major designated country before filing to minimize unexpected refusals.

Renewal as a single act

Trademarks must be renewed periodically to keep protection alive. Under the Madrid System, the international registration is renewed in one action through WIPO, before expiry. The owner pays a single renewal fee to WIPO, which extends protection in all designated countries for a further term.

This is a major practical advantage over national filings: instead of managing separate renewal deadlines and paying renewal fees in dozens of countries, the owner submits one form and one payment to WIPO and renewal is complete globally. Failure to renew in one country does not affect renewals in others; the owner renews the entire international registration or loses all designated countries at once.

When the Madrid route is the wrong choice

The Madrid System is efficient for applicants needing protection in three or more countries worldwide. However, it is not always the best route:

• Single or dual markets: If the business operates only in Switzerland and one other country, separate national filings may be cheaper than paying WIPO's combined fees. A Switzerland-only mark and an EU trademark, for example, may cost less to file and maintain separately than a Switzerland-only mark plus Madrid designations for individual EU members.
• EU-focused businesses: If the entire target market is the EU, a single European Union trademark (EUTM) filed with the European Union Intellectual Property Office (EUIPO) covers all EU members with one filing and one renewal fee. This is simpler and usually cheaper than filing a Swiss mark plus Madrid designations for individual EU countries. A business operating in Switzerland and the EU should file both a Swiss national mark (for Switzerland, which is outside the EU) and an EUTM (for the EU).
• Weak Swiss marks: If the basic Swiss mark is weak, descriptive, or vulnerable to cancellation, the central-attack risk may outweigh the efficiency gains of Madrid. A separate filing in the target country may be safer: if the Swiss mark is later cancelled, the national mark survives.
• Specialised examination regimes: Some countries (such as China or the Middle East) have unusual examination practices or fee structures that may make national filing more economical or strategic than Madrid designation.
• Immediate protection without dependency: If the applicant needs to avoid any dependency on the Swiss mark, a direct national filing in the target country is preferable, even though it costs more upfront. This is rarely necessary but matters in high-risk scenarios.

For a truly global footprint—protection in ten or more countries—the Madrid System is almost always the efficient choice. For regional or niche strategies, national or EU filings may be better.

Strategic planning: Madrid, national, or both

The choice between Madrid, national filings, and regional routes such as the EU trademark should be made at the same time as the Swiss registration is being pursued. Filing the Swiss mark first, then waiting to plan the international strategy, means missing opportunities to coordinate goods-and-services specifications, to time filings efficiently, and to budget accurately. A trademark footprint that fits the business's actual and planned markets, rather than following a default pattern, saves years and thousands of francs.

We advise on the optimal combination: a Swiss base mark, Madrid designations for key markets outside the EU, an EU trademark if the business serves the European Union, and national filings in specialised markets where Madrid is uneconomical. The strategy depends on the business's geography, budget, and risk profile. Once the Swiss mark is filed or registered, the international strategy can be executed in phases: designate the most important countries first, then expand as the business grows and budgets allow.