Direct filing vs the Madrid Protocol: which is right for your international trade mark?

If you are filing in one or two countries, direct filing is usually simpler and cheaper. If you are filing in three or more countries, the Madrid Protocol is almost always more cost-effective and easier to manage. The right choice depends on your specific situation — how many countries you need, your budget, your timeline and whether you plan to expand further in the future.

For an overview of the full filing process, see our guide on how to file an international trade mark.

Not sure if you need international protection? Read our guide on whether you need an international trade mark.

Ready to file? Estimate your costs or contact us to discuss your options.

Comparison at a glance

Factor	Direct filing	Madrid Protocol (WIPO)
Best for	1–2 countries	3+ countries
Filing process	Separate application in each country	Single application through WIPO
Government fees	Paid to each country's IP office	WIPO base fee + individual country fees
Local lawyer fees	Required in most countries	Not required for initial filing (but may be needed later)
Language	Must file in each country's language	Can file in English
Processing speed	Generally faster	Slower (passes through IP Australia, then WIPO, then each country)
Centralised management	No — managed separately in each country	Yes — renewals and records managed through WIPO
Adding countries later	New application required in each country	Subsequent designation through WIPO
Dependency risk	None — each registration is independent	Dependent on basic mark for 5 years
Protection granted	Full national registration	Equivalent to a national registration
Renewal	Separately in each country	Centrally through WIPO

Direct filing: pros and cons

Pros

Faster processing. Direct applications go straight to the country's IP office without passing through IP Australia and WIPO first. This can save several months.

Independent registrations. Each registration stands on its own. If your Australian mark is cancelled, your direct overseas registrations are unaffected.

Local legal advice. Working with a local lawyer means you get country-specific advice on the strength of your mark, potential conflicts and local filing requirements before you file.

Simpler for one or two countries. If you only need protection in a small number of countries, direct filing avoids the WIPO base fee and the added administrative layer.

Cons

Higher cost at scale. Local lawyer fees in each country add up quickly. For three or more countries, direct filing is usually significantly more expensive than the Madrid route.

More administration. You manage each registration separately — different renewal dates, different correspondence, different requirements. This creates an ongoing administrative burden.

Language barriers. In non-English-speaking countries, applications and correspondence may need to be translated, adding cost and complexity.

Finding reliable lawyers. You need to identify and vet trade mark lawyers in each jurisdiction, which can be difficult if you do not have existing contacts.

Madrid Protocol (WIPO): pros and cons

Pros

Cost-effective for multiple countries. You avoid paying local lawyer fees for the initial filing in each country. The more countries you designate, the greater the cost saving compared to direct filing.

Single application. One application, filed through IP Australia or directly with WIPO, covers all your designated countries. This dramatically reduces paperwork and coordination.

Centralised management. Renewals, changes of name or address, and other administrative updates can be made centrally through WIPO, rather than separately in each country.

English language. You can file and manage your international registration in English, regardless of the languages spoken in your designated countries.

Easy to expand. Adding new countries later is straightforward through a "subsequent designation" — you do not need to file a completely new application.

Equivalent protection. A Madrid registration grants the same protection as a direct national registration in each designated country.

Cons

Dependency on your basic mark. Your international registration depends on your Australian trade mark application or registration (your "basic mark") for the first five years. If your basic mark is cancelled, refused or narrowed during that period, your international registrations may be affected. After five years, each designation becomes independent.

Slower initial processing. The application passes through IP Australia, then WIPO, then each designated country. This adds months to the process compared to direct filing. However, if you file within six months of your Australian application, you can claim priority, backdating your international filing to the date of your Australian application.

Local lawyers may still be needed. If a designated country raises objections or refuses your mark, you will often need to engage a local lawyer to respond. For example, the US requires a US-based attorney to handle any substantive issues.

Not all countries are members. Some countries are not party to the Madrid Protocol. For those countries, direct filing is your only option.

WIPO fees for small portfolios. If you are only filing in one or two countries, the WIPO base fee makes the Madrid route more expensive than going direct.

Cost comparison

Costs vary significantly depending on the countries involved, the number of classes and whether issues arise during examination. Here is a general comparison to illustrate the cost dynamics.

Example: filing in one country (e.g. New Zealand)

Cost element	Direct filing	Madrid Protocol
Government filing fee	~AUD 400	~AUD 400 (individual fee)
WIPO base fee	N/A	~AUD 1,200
Local lawyer fee	~AUD 500–1,500	N/A
Approximate total	~AUD 900–1,900	~AUD 1,600

For a single country, direct filing is often comparable or cheaper.

Example: filing in five countries

Cost element	Direct filing	Madrid Protocol
Government filing fees	Varies by country	Varies by country
WIPO base fee	N/A	~AUD 1,200 (one-off)
Local lawyer fees	~AUD 500–2,000 per country	N/A
Local lawyer total	~AUD 2,500–10,000	N/A

For multiple countries, the Madrid system typically saves thousands of dollars by eliminating local lawyer fees for the initial filing.

For exact costs tailored to your countries, use our international fee calculator.

For country-specific cost breakdowns, see:

• US trade mark costs
• UK trade mark costs
• EU trade mark costs
• NZ trade mark costs
• China trade mark costs
• UAE trade mark costs

When each approach is better

Choose direct filing when:

• You are filing in one or two countries only
• The country is not a party to the Madrid Protocol
• You want local legal advice before filing (for example, if you are unsure about the strength of your mark in that market)
• You need the fastest possible filing and cannot wait for the Madrid process
• Your Australian trade mark application is at risk of refusal or opposition, making dependency a concern

Choose the Madrid Protocol when:

• You are filing in three or more countries
• You want centralised management of your international portfolio
• You plan to add more countries in the future
• You want to minimise costs by avoiding local lawyer fees for the initial filing
• You want to file in English across all countries
• Your Australian trade mark is securely registered or likely to proceed to registration without issues

Consider a hybrid approach

Many businesses use a combination of both methods. For example, you might use the Madrid system for most countries but file directly in a jurisdiction where you want local legal advice before filing or where the country is not a Madrid member.

Frequently asked questions

Can I switch from direct filing to Madrid (or vice versa) later?

You cannot convert an existing direct registration into a Madrid registration or vice versa. However, you can file a new Madrid application covering additional countries at any time, even if you have existing direct registrations elsewhere.

What happens to my Madrid registration after five years?

After five years, each country designation becomes independent of your basic Australian mark. This means that even if your Australian mark is later cancelled, your overseas registrations will not be affected.

Do I get the same level of protection with both methods?

Yes. A Madrid registration in a designated country grants the same rights as a direct national registration. There is no difference in the scope or enforceability of protection.

Can I use both methods at the same time?

Yes. You can have a Madrid registration covering some countries and direct registrations in others. Many businesses take this hybrid approach.

What if my Madrid application is refused in one country?

A refusal in one country does not affect your registrations in other countries. You can engage a local lawyer to respond to the refusal in that specific country.

Next steps

The best filing method depends on your business, your budget and your growth plans. At Markster, we help Australian businesses choose the right approach and manage their international trade mark portfolios.

• Estimate your filing costs
• Contact us to discuss your filing strategy

For an overview of the full filing process, see our hub guide on how to file an international trade mark.

Please note, the information in this article is general in nature and is not legal advice. You should seek independent legal advice tailored to you and your circumstances.