Filing & Strategy
The Madrid system lets a US company extend its trademark to France, the European Union and dozens of other jurisdictions through a single WIPO filing. It is efficient — and full of traps that only appear five years later. Here is how it works, seen from the European receiving end.
An international trademark is a registration filed with the World Intellectual Property Organization (WIPO) in Geneva, designating several countries in a single application. WIPO acts as a central clearing desk: it receives the application, records the international registration, and transmits the request to the trademark office of each designated jurisdiction.
The name misleads. There is no worldwide trademark right. Each designation is examined under the national (or regional) law of the designated office and, once accepted, functions as the equivalent of a national registration there. Each designation is independent of the others: a refusal in one country has no effect on the rest.
US practitioners know this system through TEAS and the USPTO’s role as office of origin under the Madrid Protocol; what follows is the view from the receiving side — France and the EU — where we act for the US applicants and their counsel.
An international registration must be built on a prior basic mark — an existing application or registration in the holder’s home system. For a US company that will usually be a USPTO application or registration; the basic mark can equally be a French mark or an EU trademark, or a national mark of another country, which is precisely why the choice deserves thought (see below).
For its first five years, the international registration is dependent on that basic mark. If the basic mark is cancelled, refused or restricted during those five years, the international registration falls with it, to the same extent. Attacking the basic mark during this window in order to bring down the entire international structure is known as the central attack — a standard aggressive move that any opponent’s counsel will evaluate.
This is a serious, structural consideration for US-based filings: a US basic registration remains exposed to non-use cancellation and other challenges under US law, and any such loss within the dependency period propagates worldwide. (After a central attack, transformation of designations into direct national filings may be available — [VERIFY: transformation mechanism and deadline are not covered in the source pages].)
From a Madrid filing, a US holder can reach Europe two ways:
The two are not mutually exclusive, and the reasoning developed for direct filings (EUTM breadth versus French resilience) applies unchanged when routing through Madrid.
Remember also the calendar: a first filing — for example a US application, or a French application used as the anchor of a European program — opens a 6-month priority window under the Paris Convention within which subsequent filings, including Madrid designations, can claim its date.
WIPO does not examine substance. Each designated office applies its own law and may issue a refusal against the designation — in Madrid terminology, a provisional refusal — exactly as it would object to a locally filed application. For France and the EU that means, in particular, objections on absolute grounds (distinctiveness, descriptiveness) and oppositions by owners of earlier rights (see responding to a trademark opposition).
Practical realities for a US holder:
The system’s genuine strength is administrative. The international registration is renewed in a single operation at WIPO, rather than through separate renewals in every national office — a material saving for a portfolio spread over many countries. Subsequent designations can extend the same registration to new countries as the business grows, and recordals are centralized as well.
The trade-offs, summarized:
| Madrid designation | Direct national/EU filing | |
|---|---|---|
| Filing | One application at WIPO | One per office |
| Renewal | One renewal at WIPO | One per office |
| Dependency | Tied to the basic mark for 5 years (central attack) | None |
| Examination | Local law applies in full, via provisional refusals | Local law applies in full, directly |
Madrid fees are paid in Swiss francs, so the EUR/USD equivalent fluctuates with exchange rates. The amount depends on several variables: whether the mark is in black-and-white or in color (a factor that, among the systems discussed on this site, matters only for international marks), the number of classes, the office of origin of the basic mark, and the number and identity of the designated countries. The interplay is complex enough that WIPO publishes an official fee calculator on its site, which we use when preparing estimates; for direct INPI and EUIPO filings, see our consolidated fees and costs page. Our firm’s fees for Madrid strategy and for handling French/EU designations and refusals are quoted case by case and billed in EUR or USD.
The recurring mistake we see is treating Madrid as a checkout flow. The consequential decisions come earlier: which mark and which specification to use as the basic mark (knowing everything downstream depends on it for five years), whether to designate the EU, France, or both, how to sequence filings within the priority window, and how to budget for the provisional refusals that a multi-country program statistically will produce. That is trademark strategy, not form-filling — and it is where European local counsel earns its keep.
Extending a US brand to France or the EU through Madrid? Contact us to review your designations before you file.
How US companies register a trademark in France: INPI filing steps, timeline, official fees from €190, opposition window, and why a French mark matters.
One EUIPO filing protects all 27 EU member states. Process, official fees from €850, conversion safety net, and when to add a French national mark.
Official INPI and EUIPO trademark fees plus transparent firm fees from €350: filing, searches, renewals, oppositions. Billed in EUR or USD.