International trademark registration: procedure and benefits

A trade mark certificate obtained in Ukraine is like an internal passport for your brand: it works flawlessly within the country. But as soon as your business enters the international arena, exporting goods or services, this document loses its validity. Fortunately, there is an effective way to protect your brand globally without drowning in paperwork. In this article, we will look at how the Madrid System for the International Registration of TMs works.

Section 1: Why do I need international registration of TM?

For an ambitious business the Ukrainian market is only the beginning. Sooner or later the question of entering the international arena arises: exporting goods, providing services to foreign clients, attracting foreign investment. And it is at this point that business owners are faced with an unpleasant discovery: their brand, so well-known and protected in Ukraine, is absolutely defenceless in the rest of the world. Let’s analyse in detail why this happens and how to fix it.

1.1 Limitations of national registration: why a Ukrainian certificate is valid only on the territory of Ukraine

The whole world intellectual property law is based on the inviolable principle of territoriality. This means that the rights granted by a state are valid only within its geographical boundaries. Your trade mark certificate issued by the Ukrainian National Office of Intellectual Property and Innovation (UKRNOIVI) is a powerful legal document, but its “jurisdiction” ends at the borders of Ukraine. It is like your internal passport: it certifies your identity in Ukraine, but for travelling around the world you need another document.

Imagine a very realistic situation. You are the owner of a successful Ukrainian brand of craft sweets called Licorice Mriya. Your products are immensely popular, you have thousands of followers on Instagram, and then you receive a large order from a distributor in Germany. Encouraged by your success, you ship your first batch. But you don’t take one thing into account: a clever German entrepreneur, who also follows Ukrainian trends, checked the register of the German Patent Office (DPMA) six months ago, saw that the name “Süßer Traum” (the German equivalent of “Sweet Dream”) was free, and registered it for himself. Legally, he didn’t break any German law. What happens next?

• Blocking at customs: Your consignment arrives in Germany and the local owner of the Süßer Traum TM, claiming exclusive rights, files an application with customs. Your shipment is seized as a counterfeit. You suffer huge losses.
• Prohibition of activities: You cannot sell your products in Germany under your own brand name. Moreover, the “owner” of the German TM can sue you to stop any use of this name in advertising, on your website (if it is aimed at a German audience) and even demand compensation for the “infringement” of his rights.

Your Ukrainian certificate has no legal weight in this situation. You find yourself in a trap created by your own inactivity. The territorial principle creates a “legal vacuum” for your brand in every country where you have not taken care to protect it.

1.2 Key advantages of an international procedure: saving time and money, centralised management, simplification of the process

OK, the problem is clear. But what’s the solution? Submit separate applications to every country in the world? It’s a real administrative and financial nightmare. Imagine: you have to find a patent attorney in the US, then in China, then in the UK. You have to sign a contract with each one, prepare a package of documents according to local requirements, translate everything into the relevant languages, deal with national fees and pay them in different currencies. This is the way for giant corporations with huge legal departments.

Fortunately, for the rest of the world, there is a much more elegant solution: the Madrid System for the International Registration of TMs. Here are its main advantages that make it so attractive:

• Radical cost savings. Instead of paying the full set of national attorneys and full rates of national fees in 5, 10 or 20 countries, you pay one basic fee to the World Intellectual Property Organisation (WIPO) and individual fees for each selected country, which are often lower than direct filing. Savings, especially when registering in 5+ countries, can reach tens of thousands of euros.
• Colossal savings in time and effort. You submit one application in one language (your choice of English, French or Spanish) through one office – your native UKRNOIVI. No need for any translations, no searching for dozens of lawyers. All primary communication goes through one channel.
• Centralised portfolio management. This is probably the most underestimated advantage. Imagine that after 3 years you changed your legal address or your company changed its name. With national registrations, you would have to make changes to the registers of each country separately. With the Madrid system, you submit one application to WIPO and these changes are automatically applied to all countries in your registration. Renewals every 10 years are the same: one application, one payment. It’s like a single “control panel” for your global brand asset.
• Flexibility and expandability. You started by registering in Poland, Germany and the Czech Republic. After two years, your business is ready for the US and Canadian market. You don’t have to start all over again. You simply apply for a “territorial extension” of your existing international registration, adding new countries to it.

1.3 For whom it is relevant: exporters, IT companies, online businesses, companies with plans to scale up

International registration has long ceased to be a tool exclusively for industrial giants. In today’s digital world, it is a necessity for a huge number of Ukrainian businesses:

• Exporters. This is the most obvious group. A furniture manufacturer supplying products to Scandinavian countries; an agro-firm exporting honey and oil to the EU; a designer clothing brand that sells through showrooms in Paris and Milan. For them, brand protection in the countries of distribution is a matter of survival and copy protection.
• IT companies. Any company that develops software, SaaS platforms, mobile apps or games is global by default. Your product is available on Google Play or App Store from anywhere in the world. The name of your app is your greatest asset. If you don’t protect it in the US, a competitor could release a clone with a very similar name, poaching your users and ruining your reputation.
• Online businesses and creators. They are bloggers, Influencers, owners of online schools, e-commerce projects on Shopify, sellers of digital goods on Etsy. Their audience is the whole world. Their brand is often their name or a creative pseudonym. Imagine that your popular YouTube channel about travelling suddenly receives a complaint from someone in Australia who has registered your channel’s name as a TM in their country and now demands to stop using it.
• Ambitious startups. Even if you are just starting out and working for the Ukrainian market, but your business plan includes a clause about scaling up and entering the EU or US markets, international registration is a strategic move. When attracting investment (Seed, Series A), investors will definitely conduct due diligence of your intellectual property. Having international registrations in key regions will show them that you are thinking strategically, protecting your assets and mitigating future risks. This significantly increases the investment appeal of your project.

Section 2: The Madrid System: The Only Way to Global Protection

So, we have learnt that trying to protect a brand in each country separately is time-consuming, expensive and complicated. Fortunately, there is an elegant and effective solution – the Madrid System for the International Registration of Trade Marks. This is not just a convenient option, but in fact the only realistic way for SMEs to reach a global level of protection. Let’s look at what this system is, who runs it and how it works.

2.1 What the Madrid System is and how it works under the World Intellectual Property Organisation (WIPO)

The Madrid system is an international agreement that allows you to obtain protection for your trade mark in many countries around the world by filing a single application. The administrative centre of this system is the World Intellectual Property Organisation (WIPO), located in Geneva, Switzerland. WIPO (or WIPO in English) is a specialised agency of the United Nations that serves as a global forum for intellectual property services, policy, information and cooperation.

In essence, WIPO in the Madrid system acts as a kind of “international post office” or “one-stop shop”. You do not apply directly to each country. You file it with your national office (for us it is UKRNOIVI), and that office forwards it to WIPO. WIPO then carries out its formal verification, publishes your TM in the international register and “sends” your application to the national Offices of all the countries you have indicated. It is a centralised and harmonised system with over 130 member countries covering over 80% of world trade. This list includes key markets such as the US, the European Union, China, Japan, Canada, the UK and many others. This makes the Madrid System an incredibly powerful tool for global expansion.

2.2 The basic requirement for starting: the presence of a “basic” national application or an already registered TM in Ukraine

This is a key and inviolable principle of the Madrid system. You cannot just come and file an international application from scratch. Your international registration must necessarily be based on a national registration. This is called a “basic application” or “basic registration”.

What does this mean in practice? Before you can apply for international protection, you must:

• Either already have a certificate of TM registration in Ukraine.
• Or, as a minimum, to apply for registration of the TM in Ukraine and to receive from UKRNOIVI a notification on setting the date of filing.

It is important to realise that your international application will be a “mirror” of the base application. This means that:

• The owner of the international application must be the same as the owner of the underlying Ukrainian application.
• The image of the TM (name and/or logo) must be identical to the one filed in Ukraine.
• The list of goods and services in the international application may be the same or narrower than in the basic application, but in no case wider. You cannot ask for protection for clothing in your international application if your basic Ukrainian application lists only restaurant services.

This requirement of your basic Ukrainian registration is a guarantee for the system that your application is not fictitious and has a real basis in the country of origin. That’s why, when planning international expansion, the first thing to do is to check whether everything is in order with the basis of TM registration in Ukraine. You can read more about it in our comprehensive guide: “How to register a trade mark in Ukraine in 2025“.

2.3 How it works: one application, one language, one set of fees for protection in many participating countries

The magic of the Madrid system lies in its radical simplification. Instead of a chaotic and complicated procedure of filing dozens of separate applications, the registration of an international trade mark is reduced to an elegant “three unit” formula:

• One application: You fill in only one standardised international application form (Form MM2). In it, you fill in your personal details, your basic registration and tick the boxes for the countries in which you wish to be protected.
• One language: You do not need to translate your documents into dozens of languages. You fill in the application in one of the three working languages of the system – English, French or Spanish. For Ukrainian business it is, of course, most often English.
• One set of fees: You do not make dozens of transactions to different countries. You pay a single payment to WIPO in Swiss francs. This payment consists of a basic fee, additional fees for classes of goods and individual fees for each selected country. A fee calculator is available on WIPO’s website, allowing the exact cost to be calculated even before the application is submitted.

The Madrid System thus transforms a complex, expensive and time-consuming process into a standardised, understandable and significantly more accessible procedure. It democratises access to international protection, making it possible not only for corporations, but also for dynamic SMEs seeking to conquer the world.

Section 3: Step-by-step procedure for international registration from Ukraine

We have understood what the Madrid system is and why it is so favourable. Now let’s go all the way in practice. How does a Ukrainian company or entrepreneur apply for and obtain international protection for their brand? The process consists of several consecutive steps.

3.1 Step 1: Filing an international application through the Ukrainian National Office (UKRNOIVI)

Your first step is to prepare and file your international application (Official Form MM2) not directly with WIPO, but through your “Office of Origin” – the Ukrainian National Office of Intellectual Property and Innovation (UKRNOIVI). This is a mandatory requirement. UKRNOIVI acts as a primary filter and intermediary.

At this stage, UKRNOIVI staff perform an important function – certification. They check whether your international application corresponds to your basic Ukrainian registration or application. That is, whether the data on the owner, the image of the mark and whether the list of goods and services in the international application is broader than in the Ukrainian one. If everything is in order, UKRNOIVI certifies your application and forwards it to WIPO in Geneva. You pay a separate small government fee in Ukraine for this service. This step is critical because it is the date of receipt of the UKRNOIVI application (provided that WIPO receives it within 2 months) that will be considered the date of your international registration, fixing your priority.

3.2 Step 2: Selecting the countries in which you wish to obtain protection

This is one of the most interesting and responsible steps, where you determine the geography of your brand protection. The MM2 application form has a special section where you simply tick the boxes of the Madrid System countries you are interested in. You can choose one country, several, or even all available.

The choice should be strategic and based on your business plans:

• Countries of current export: Where you are already selling your products or services.
• Countries of potential interest: Markets you plan to enter in the next 2-3 years.
• Countries where your production is located: If your goods are produced in China, for example, it makes sense to protect your brand there to avoid problems.
• Neighbouring countries: Often, entering the international market starts with the closest countries. For example, registering a trade mark in Poland is a very popular first step for many Ukrainian businesses targeting the EU market.
• Key global markets: USA, China, UK, Japan, UK.

You can select not only individual countries, but also entire regional groupings, such as the European Union. By ticking the EU, you declare your wish to be protected in all (currently 27) member states.

3.3 Step 3: Calculating and paying the international duty. What does it depend on?

Once the countries have been selected, it is time to calculate the cost. The international fee is paid in a single instalment in Swiss francs (CHF) directly to WIPO. Its final amount consists of three main parts:

1. Basic fee: A fixed amount for the application itself. It differs slightly for black and white (CHF 653) and colour (CHF 903) marks.
2. Additional fee: Payable if your application contains more than three classes of ICTU. For each additional class, plus CHF 100.
3. Individual fee (or complementary fee): This is the fee for the processing of your application in each selected country. The amount of this fee is set by each country independently. For example, the examination fee in the USA will be considerably higher than in Moldova.

WIPO’s official website has a convenient online fee calculator (Madrid Fee Calculator). You simply enter the details of your application (number of classes, colour) and select the countries, and the system automatically calculates the exact amount to be paid.

3.4 Step 4: Processing of the application at WIPO and onward transmission to the national Offices of the selected countries

When your application from UKRNOIVI arrives at WIPO and you pay the fee, the work of international experts begins. WIPO conducts its own formal examination: it checks whether the goods and services are correctly classified, whether the application is correctly filled out. If all is well, WIPO:

• Enters your trade mark in the International Register.
• Publishes information about it in its official gazette (WIPO Gazette of International Marks).
• Issues you a certificate of international registration.

It is important to realise that this certificate does not mean that your brand is protected in all selected countries. It only confirms that your application has passed the international stage. WIPO then sends your application to the national Offices of all the countries you have indicated. It is at this point that the longest step begins.

3.5 Step 5: Waiting for a decision from each country

Now your application is examined in each country separately according to its national laws. Experts in the USA, Poland and Germany carry out their own qualification examination: they check your TM for uniqueness in their national registers and for compliance with local legislation.

Under the Madrid Agreement, each country has a standard deadline for issuing a decision – usually 12 or 18 months. During this time, the country’s Office can:

• Grant protection: If no problems are found, the country sends a notification to WIPO granting full protection for your TM in its territory.
• Provisional refusal: If there are obstacles (e.g. a similar national TM is found), the Office sends a reasoned refusal. You will have the opportunity to respond to it by engaging a local patent attorney.

In this way, your single international registration may have a different fate in different countries, with some receiving full protection, some receiving partial protection (not for all classes) and some receiving rejection. The results for each country are recorded by WIPO and displayed in your profile in the international database.

Conclusions

To summarise, we can safely say that international registration under the Madrid system is a powerful, effective and, in fact, a non-alternative tool for any Ukrainian business that plans to enter the global arena. Although at first glance the procedure may seem complicated and multi-stage, in fact it significantly simplifies, cheapens and speeds up the process of obtaining legal protection for a brand in dozens of countries compared to individual national filings.

It’s not just a formality, but a strategic investment in your company’s global future. It protects you from unscrupulous competitors abroad, increases the value of your brand as an intangible asset and opens the door to secure exports, international partnerships and investment. It is important to remember that obtaining a certificate is only the beginning. It is equally important to understand what rights of the registered trade mark owner you get and how to use them correctly. You can read more about this in our next article “Use and Protection of a Trade Mark: Owner’s Rights”.