How to apply for international trademark registration through the Madrid system

The system is called the Madrid System because it is based on an international agreement signed in Madrid. Norway is a member of the system through the agreement called the Madrid Protocol. The UN agency World Intellectual Property Organization (WIPO) is responsible for administering the application system.

The application system is based on a national trademark application or registration. This is called the basic application. When you have decided which countries you want protection in, you submit an application to WIPO. If you have used a Norwegian application as a basis, the Norwegian Industrial Property Office (NIPO) will go through and check the information before WIPO forwards the case to the countries you have chosen. Each country then assesses whether the registration can be protected in their respective country. 

• Simpler and cheaper than applying in each country separately
• Possibility to extend the international registration at a later date to cover more countries than those you originally selected
• The processing time in the different countries can vary, but is never more than 18 months (countries have a maximum of 18 months to decide whether the trademark can be registered in their country)
• If less than six months have passed since you filed the basic application, you will receive this application date as an advantage. This is called priority.
• Only one authority (WIPO) to deal with for the administration of the registration in many countries (payment of fees, renewals, transfers, etc.)

• The international application is dependent on the national basic application for five years.
• If the basic application is refused or cancelled before five years have passed, the international registration in WIPO lapses.
• If that happens, you can convert the international registration into national matters in the individual countries.

• Create an account and log in to Madrid e-filing.
• All communication between you as an applicant and NIPO and WIPO takes place electronically through the Madrid e-filing portal. 
• You use the information from your basic application to create the international application. You also use the same list of goods and services. This list can be narrowed and specified, but it cannot be broadened. 
• When you have entered the application into the portal, NIPO will validate the information. If we find deficiencies in your application, you will will be notified in the portal. You can then correct the deficiencies within a given deadline before the application is processed further. When the application is correctly prepared, it will be reviewed by WIPO. 
• WIPO registers the trademark in the international register. You will receive a registration certificate with an international registration number. This proof does not in itself grant any rights to your trademark. At this stage, the trademark is only registered in WIPO's register. It has not yet obtained protection in the individual countries. 
• The application will then be processed in each of the countries you have selected. When the registration authority has assessed the application, they will send you a letter. You will then find out whether your trademark has entered into force (registration) or whether it registration has been refused in this country. If you receive a letter of refusal, you will also be informed what you can do to obtain protection. Different countries may have different practices for what they accept in relation to goods and services. 
• You always have access to updated application status through your account.

If you have submitted an application in Norway and are considering applying in several countries, it may be a good idea to apply within 6 months from the date you applied in Norway. Then you can get protection from the filing date of the Norwegian application , and the trademark is considered to have been filed in the new country on the same day as in Norway. We call this priority. The priority can mean that you can come before others who have applied for the same or a similar trademark. 

The international registration is dependent on the national basic application/registration for five years. If your Norwegian application is not registered, or your registration is deleted before five years have passed, the international registration will also be deleted. It may therefore be beneficial to wait until your Norwegian application has been processed before you submit an international application. You should still apply within six months of submitting the Norwegian application, so that you can take advantage of priority.

You can pay all fees, including the Norwegian Industrial Property Office's transmission fee of NOK 800, through the Madrid e-filing portal. Fees are paid in Swiss francs. The amount is calculated in the electronic application. You can pay by credit card, through your WIPO account or via bank transfer.

The total fee amount depends, among other things, on how many countries you have selected in the application and how many classes of goods and services the application covers. You can calculate the price using WIPO's fee calculator.

The processing time in the respective countries may vary, but does not exceed 18 months. If the trademark is not refused within this period, your trademark is considered protected in the relevant country.

Applications through Madrid e-filing are the easiest and most convenient way to apply for international registration. If this is not possible in your case, you can use a form called MM2. You can find this on WIPO's website. In the form you will find information on how to pay. To ensure that WIPO can link your payment to the correct application, it is important to provide sufficient information with the payment. You should state which form the payment applies to (MM2), WIPO's reference number and application or registration number on the Norwegian application or registration.

International registrations must be renewed directly with WIPO. WIPO also handles changes, such as transfers and name changes, so that the information is updated and correct in all countries where the registration applies.