Our team often encounters scenarios where a company needs to register a trademark in multiple countries, leading them to choose between the Madrid System and filing applications directly in each country.
Let’s consider one of our recent cases to understand which option is better: filing through the Madrid System or direct filing.
Advantages and Disadvantages of Madrid System and Direct Filings
Madrid Application
Advantages:
– Single application and procedure, eliminating the need to hire representatives in different countries;
– Quick and easy submission in numerous countries;
– Payment is only for official fees, resulting in significant savings on representative services.
Disadvantages:
– If the basic application is withdrawn or contested within 5 years, the international registration is also affected;
– Full payment of fees for all designated countries is required upfront;
– No guarantee that the list of goods and services will be accepted by all countries without issues.
Direct Filing through Local Representatives
Advantages:
– Lower risk of receiving official actions or refusals;
– Applications are independent; reduced risks;
– The filing process can be spaced out over six months with claims of priority, allowing more manageable payments. Also read about Amazon Brand Registry.
Disadvantages:
– The need to find a representative in each country;
– Managing communication through different channels with each representative;
– Payment to multiple service providers, which can be more expensive.
Cost Comparison
From our experience, the Madrid Application might not be the optimal choice if there are reliable tools for engaging directly with representatives worldwide who offer reasonable fees comparable to those of the Madrid System. Here’s a cost comparison based on a client who needed to register a trademark in India, Brazil, Europe, and the UK, in two classes:
- Madrid System: $3,092 total = $2,542 in fees + $550 for the U.S. representative’s services.
- Direct Filing: $3,404 total, broken down into $380 for India, $911 for Brazil, $866 for the UK, and $1,247 for Europe.
The difference is only $312, but with Direct Filing, the client received fully independent applications crafted by local specialists, all claiming the same priority date. The choice seems clear! Find the most suitable attorney worldwide, using our Attorney’s Marketplace.
Conclusion
As evident, the decision between the Madrid System and Direct Filing depends on various factors. While the Madrid System can offer convenience and savings, Direct Filing provides independence and the expertise of local specialists, often making it a more appealing option for trademark registration in multiple countries.
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Also note: trademark registration in Australia, UK trademark registration.
