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CategoryTrademark
Published28 July 2026
Authors
Uğurcan TekinPartner
Alican TekinPartner

The Madrid Protocol: Is the Fifth Year Really the End of the Risk?

The Madrid System is usually explained through its economies: one application, one language, one set of fees, protection in up to a hundred and sixteen territories. Those economies are real. The risks that come with them are less often set out with the same precision, and for a Turkish rights holder two of them decide whether the system is the right choice at all.

The Basic Mark and What Depends on It

Article 2(1) of the Protocol permits an international application to be based either on an application filed with the Office of a Contracting Party or on a registration in that Office's register. Türkiye is party only to the Protocol, so a pending TÜRKPATENT application is a sufficient basis; a registration is not required. TÜRKPATENT acts as Office of origin and certifies that the particulars of the international application correspond to those of the basic mark.

The ability to file on a pending application is presented as an advantage, and in one narrow sense it is: the international filing date can be secured early. In every other sense it maximises the exposure described below, because the basic mark can still be refused, opposed successfully, or withdrawn.

One filing reaches every designated territory — and one national decision can unwind all of them.

Central Attack, and the Part That Survives the Fifth Year

Article 6(2) provides that the international registration becomes independent of the basic mark upon expiry of five years from the date of the international registration. Article 6(3) provides that, before the expiry of those five years, the protection resulting from the international registration may no longer be invoked if the basic application or registration has been withdrawn, has lapsed, has been renounced, or has been the subject of a final decision of rejection, revocation, cancellation or invalidation.

Read alone, Article 6 suggests a clean cut-off. Rule 22 of the Regulations removes it. Where a proceeding capable of producing one of those outcomes has begun within the five-year period but has not become final before the period expires, the Office of origin notifies the International Bureau of that fact, and notifies it again when the proceeding concludes. The consequence is that an invalidity or revocation action commenced in Türkiye on the last day of the fifth year, and finally decided four years later, still brings down the international registration.

“The five-year dependency period is not a limitation period for the risk. It is a limitation period for starting the action that carries the risk.”

For a Turkish proprietor the practical implication is specific. Where the basic mark is one that a competitor has a plausible reason to attack — a mark registered broadly, a mark whose use is thin in several classes, a mark adjacent to an established sign — the international registration should be treated as dependent until the domestic file is genuinely quiet, not until the fifth anniversary appears in the docket.

Transformation Preserves the Date and Nothing Else

Article 9quinquies allows the holder of a cancelled international registration to file a national application for the same mark with the Office of any Contracting Party in which the international registration had effect, and to have that application treated as filed on the date of the international registration, with the same priority. Three conditions apply: the application must be filed within three months of the date on which the international registration was cancelled; the goods and services must be covered by the list in the international registration for that Contracting Party; and the application must comply with all requirements of the applicable law, including as to fees.

Transformation is therefore a genuine remedy for the filing date and no remedy at all for the economics. Each designated territory requires a separate national application, at that country's full national fees, through local representation, within three months. A portfolio of twelve designations that collapses in year four is a transformation exercise with a three-month deadline and a cost that will exceed the original Madrid filing several times over.

Refusal Periods: Twelve Months, Eighteen Months, and Longer

Under Article 5(2)(a) a designated Office must notify a provisional refusal within twelve months of the notification of the designation. Article 5(2)(b) permits a Contracting Party to declare that the period is replaced by eighteen months, and a large number have done so — among them the European Union, the United States, the United Kingdom, Japan, the Republic of Korea, Switzerland, Canada, Australia, China and Türkiye itself.

Article 5(2)(c) is the provision that should be explained to a client before a filing programme is designed. It permits a Contracting Party which has declared the eighteen-month period to specify that a refusal resulting from an opposition may be notified after that period expires. The correct advice is therefore not that protection is secure after eighteen months, but that no refusal will arrive without a notification and that an opposition-based refusal may arrive later than the headline period suggests.

Fees: Where the Cost Estimates Go Wrong

The Schedule of Fees sets the basic fee at 653 Swiss francs for a mark in black and white and 903 francs for a mark in colour, with a complementary fee of 100 francs for each designated Contracting Party that does not charge an individual fee and a supplementary fee of 100 francs for each class beyond three. Cost estimates built on those figures are almost always wrong for a Turkish portfolio, because the markets a Turkish rights holder actually targets have declared individual fees.

The European Union charges 789 francs for the first class, 48 for the second and 144 for each further class. The United States charges 460 francs per class. The United Kingdom, Japan, China, the Republic of Korea, Switzerland, Canada and Australia all charge individual fees of their own. A designation programme covering the European Union and the United States across four classes bears very little relationship to a hundred francs per country. WIPO's fee calculator should be run before any figure is given to a client, because individual fees are revised by separate notifications and several were revised during 2026.

Separately, TÜRKPATENT charges its own transmittal fee as Office of origin. Under the 2026 tariff, item 02.01.19 — notification of an international trademark application to WIPO under the Madrid Protocol — stands at 3,850.00 Turkish lira. Item 02.01.35 sets a reduced figure of 3,350.00 lira for an international application for a mark in Turkish characters, a distinction that is easy to miss. Subsequent designations and other requests are transmitted under item 02.01.20 at 1,630.00 lira, and transformation and replacement under item 02.01.21 at the same figure.

The United States Runs Two Calendars

Designating the United States requires a declaration of intention to use the mark on Form MM18, annexed to the international application or subsequent designation, in English and unamended. That is the entry requirement. The maintenance requirement is separate and is the obligation most often missed.

A Section 66(a) extension of protection must be maintained by a declaration of use or excusable non-use, with a specimen, filed between the fifth and sixth years from the United States registration date, again between the ninth and tenth years, and every ten years thereafter. A six-month grace period is available with a surcharge. This declaration does not replace the ten-year renewal of the international registration with WIPO, and the international renewal does not replace it. Two calendars run in parallel on the same right, and failing either one loses the United States designation.

When Madrid Is the Wrong Instrument

Where a single market is targeted, direct national or regional filing is usually cheaper and faster. An EU trade mark filed directly with EUIPO costs 850 euros for one class, with 50 euros for the second and 150 for each subsequent class, and the WIPO basic fee and the TÜRKPATENT transmittal fee do not arise at all. As a general orientation, the economic case for Madrid weakens below three target territories.

Two further considerations point the same way. The list of goods and services in the international registration is bounded by the basic mark and can be limited but not extended, so a Turkish basic mark drafted around broad class headings will draw provisional refusals in offices applying a high specificity standard — each requiring a local response with local counsel, and each eroding the saving. And the unitary character of the EU trade mark under Article 1(2) of Regulation (EU) 2017/1001 applies equally to an EU designation made through Madrid: a successful objection in one member state defeats the designation across the Union. Conversion is available, within three months and subject to the limits in Article 139(2), but it is a repair, not a plan.

Sources

Related practice areaIndustrial Property Law→

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