One of the first strategic decisions in building an international trademark portfolio is whether to use the Madrid Protocol, file directly in each target country, or do both. There is no universally correct answer. The right approach depends on a set of variables that are specific to the brand, the markets, and the stage of the business.
This post lays out the key considerations and a framework for thinking through the decision.
What Each Approach Offers
The Madrid Protocol consolidates the filing process. One application, filed through the USPTO and forwarded to WIPO, can designate any number of the 130+ member countries. Fees are paid centrally. Renewals are managed on a single 10-year cycle. Changes of ownership and address are recorded in one place. For a brand seeking coverage across many markets, the administrative efficiency is real and the upfront cost per country is generally lower than direct filing.
Direct national filing means retaining separate local counsel in each country and managing each registration independently. Renewals, maintenance filings, changes of ownership, and office action responses are all handled jurisdiction by jurisdiction. The cost per country is higher, and the administrative overhead grows with the size of the portfolio. What direct filing provides in return is complete independence. Each registration stands on its own. Nothing that happens to any other registration affects it.
The Central Tradeoff
The core tradeoff between the two approaches is efficiency against independence.
Madrid delivers efficiency. The international registration is procedurally consolidated, cost-effective across many markets, and administratively manageable. The cost is the five-year dependency on the U.S. basic mark, known as central attack risk, and a degree of rigidity in how the goods and services are identified and classified. Both of those constraints are structural features of the system, not exceptions.
Direct filing delivers independence. Each registration is sovereign. A cancellation proceeding in one country has no effect on registrations in others. The goods and services identification can be tailored to each jurisdiction. Local counsel can tailor applications based on local classification practices, local examination standards, and local enforcement norms from the outset. The cost is higher fees and more complex portfolio management.
Factors That Point Toward Madrid
Madrid tends to be the more efficient path when the number of target countries is large, particularly when seeking protection in five or more countries simultaneously. The per-country cost advantage of Madrid becomes more pronounced as the number of designations increases.
It is also well suited to situations where the U.S. basic mark is a mature, registered mark with a clean prosecution history and no significant cancellation exposure. The more stable the basic mark, the lower the central attack risk, and the more the Madrid system's efficiency advantages can be captured without commensurate structural risk.
Brands that are at a stage where administrative consolidation meaningfully reduces operational burden, such as those managing large portfolios across many markets with limited in-house IP resources, also tend to benefit from the Madrid system's centralized management structure.
Factors That Point Toward Direct Filing
Direct filing becomes more compelling when the number of target countries is small. If the priority markets are two or three specific jurisdictions, the cost difference between Madrid and direct filing narrows considerably, and the independence of direct filings may be worth the premium.
It is also the better choice when the goods and services identification needs to be tailored carefully to each market. Madrid locks in the classification and scope established in the international registration, and the USPTO cannot override IB classification decisions. Direct filing allows the goods and services to be drafted specifically for each jurisdiction's practices and requirements.
Markets where local trademark practice is complex, where prior art clearance requires nuanced local counsel involvement from the start, or where enforcement infrastructure requires a direct filing relationship with local attorneys may also favor the direct approach.
Finally, for markets that are genuinely critical to the business, the central attack risk inherent in Madrid may make direct filing the more prudent choice regardless of cost. Losing protection in a core market because of an adverse event in U.S. prosecution is a risk profile that does not fit every situation.
The Hybrid Approach
Madrid and direct filing are not mutually exclusive, and the most strategically sophisticated portfolios often use both. A common structure is to use Madrid for broad coverage across secondary markets where efficiency matters most, while filing directly in the highest-priority jurisdictions where independence and local counsel engagement from the outset are worth the additional investment.
This approach captures the cost and administrative advantages of Madrid across the bulk of the portfolio while insulating the most critical markets from central attack exposure and classification rigidity.
The Bottom Line
The decision between Madrid and direct national filings is a function of how many markets you are targeting, how stable your U.S. basic mark is, how much classification flexibility you need, and how much central attack risk you are willing to carry in your highest-priority jurisdictions. Working through those variables with counsel before filing produces a portfolio structure that reflects the actual risk and priority profile of the business rather than a default toward whichever system is easier to explain.
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