The Madrid System: A Practical Guide for Australian Trade Mark Owners Expanding Overseas

Used under a Creative Commons Licence

How the Madrid Protocol works, when it makes sense, and where Australian businesses need to be careful

Australian businesses are taking their brands overseas more than ever before. With online selling, overseas distributors, and international franchise or licensing deals, many businesses now reach customers well beyond Australia. In that environment, relying on an Australian trade mark alone is often not enough. Overseas competitors, copycats on online marketplaces, or even overseas partners can sometimes register a brand first in another country — creating costly and unexpected problems down the track.

That is why conversations about brand protection now quickly turn to overseas markets such as the United States, Europe, the United Kingdom, parts of Asia, and increasingly the Middle East and South America. For many business owners, the big question is simple: what is the easiest and most sensible way to protect a brand in more than one country?

Turn your ideas into assets.
That idea guides how we help businesses protect their brands internationally. A trade mark is more than a form or a certificate — it is something that can grow in value as your business grows. The key is making sure it is protected in the right places, at the right time. Our role is to help turn strong ideas into practical, usable brand assets that support expansion, partnerships and long-term business value, both in Australia and overseas.

Your main options for filing overseas

Broadly, Australian brand owners have two pathways to file international trade marks:

• Direct national or regional filings
• Filing separate applications in each country (for example, directly in the US, UK, China, New Zealand, etc.).

Often handled via local attorneys in each jurisdiction.

An international filing under the Madrid System

A single application filed through IP Australia that can cover many countries that are members of the Madrid Protocol. The Madrid Protocol is a treaty that lets you use one trade mark application, filed through IP Australia, to ask for protection in many other countries at the same time. You still get separate protection in each country, but you manage it through one central international registration instead of filing in every country one by one.

There are now about 116 Madrid members, covering around 132 countries and territories in total. This means your single international application can potentially cover most major markets, depending on which members you choose in the form.

Here are 20 Madrid Protocol members businesses often look at: Australia, New Zealand, United States, Canada, United Kingdom, European Union (regional office), China, Japan, South Korea, Singapore, India, Indonesia, Viet Nam, Mexico, Brazil, Turkey, Switzerland, Russian Federation, United Arab Emirates and Qatar.

Each nominated country then examines the trade mark under its own local law.

Both options can work well, and many businesses end up using a mix of the two. Because most of our clients tend to choose the second option, this blog focuses on the Madrid System – explaining what it is, how it works for Australians, and the key benefits and drawbacks you should understand before relying on it.

What is the Madrid System?

The Madrid System is basically a way to use one trade mark application to try to protect your brand in lots of different countries at once, instead of filing separately in each place. You start with an Australian trade mark (your “home base”), then file a single international application through IP Australia choosing which Madrid countries you want, WIPO does a quick formal check and sends it on, and each country then decides for itself whether to accept or refuse your trade mark under its own rules.

​Think of it as a “one‑to‑many” filing: one core Australian mark, many countries off the back of it. It saves time and admin because you don’t have to deal with different forms, languages and lawyers at the start, which is why it’s popular with Australian businesses expanding to places like the EU, UK, US and parts of Asia. It can also be cheaper upfront and easier to manage long term, because you often have just one renewal and one set of ownership details to update rather than juggling lots of separate records.

​The appeal is that you can lock in brand protection early in several countries while you’re still growing, then bolt on extra countries later as you enter new markets rather than paying for everything on day one. The trade‑off is that you still need local lawyers if a country objects or someone opposes your mark, so it’s not a magic “global trade mark”, just a more efficient way to start building an international portfolio.

Who should consider the Madrid System?

The Madrid System is not one-size-fits-all. It works best for Australian businesses that:

• have a clear, stable trade mark already filed or registered in Australia
• plan to expand into multiple Madrid member countries, rather than just one\
• want a centralised way to manage renewals and ownership changes
• are entering overseas markets gradually and want the flexibility to add countries later

It is particularly popular with:

• e-commerce brands selling internationally
• franchisors and licensors expanding offshore
• technology and SaaS businesses scaling into the US, EU or Asia
• Australian manufacturers using overseas distributors

Key risks Australian businesses need to understand

While the Madrid System can be an efficient way to seek trade mark protection overseas, it comes with some important risks that Australian businesses need to understand before relying on it as their primary international strategy.

One of the most significant risks is what is often referred to as a “central attack” during the first five years. For that initial five-year period, your international registration is directly dependent on your Australian base application or registration. If the Australian mark is successfully opposed, cancelled, revoked for non-use, or restricted in any material way during that time, the same change can flow through to your international registration. In practical terms, this means that a problem with your Australian trade mark can undermine your rights in multiple overseas markets at once, even if those overseas applications would otherwise have been acceptable on their own. This is why it is critical that the Australian application used as the base for a Madrid filing is robust, carefully drafted and defensible.

Another key risk is that your overseas protection under the Madrid System is effectively locked to the scope of your Australian filing. The goods and services you claim internationally cannot be broader than those claimed in Australia. If your Australian specification is too narrow, overly conservative, or poorly worded, that limitation will be replicated across every Madrid country you nominate. This can be particularly problematic for growing businesses that later expand into new product lines or services overseas and discover that their international trade mark protection does not cover what they are actually doing in the market. Fixing this later can be costly and may require fresh national filings.

It is also important to remember that, despite the convenience of a single international filing, local trade mark law still applies in each country. Each nominated country examines your trade mark under its own legal rules, and standards vary widely. A mark that sails through in Australia may face objections in the United States, China or the European Union based on local descriptiveness rules, prior rights, or technical requirements. If an objection or opposition arises, you will usually need to appoint a local lawyer in that jurisdiction to respond. As a result, the Madrid System should not be seen as a way to avoid local legal advice altogether, but rather as a streamlined way to start the process, with the understanding that local expertise may still be needed in higher-risk or strategically important markets.

The bottom line for Australian trade mark owners

The Madrid System can be a powerful tool for Australian businesses expanding overseas — but only when it is used strategically and with a clear understanding of its limits.

For many businesses, the best approach is a mixed strategy: using Madrid for some markets, direct filings for others, and making sure the Australian base application is drafted with international expansion in mind from the outset.

Getting this right early can save significant cost and risk later — and prevent overseas disputes over a brand you thought you already owned.

Please note the above article is general in nature and does not constitute legal advice.

Please email us info@iplegal.com.au if you need legal advice about your brand or another legal matter in this area generally.