The Madrid System enforces a strict "three-way consistency" rule between an international application and its basic mark: the representation must match, the applicant's name must be identical, and the goods/services cannot exceed those covered by the basic mark. This consistency requirement is a logical extension of the system's dependency on the basic mark and is the most common source of observations during formal examination.

First reference: Pattern

For international trademark applications, the representation of the mark must match that of the basic mark exactly. This goes beyond "looking similar"; it requires strict correspondence in all elements: text, graphics, and their combination must be identical. Common pitfalls include submitting a color version for an international application when the basic mark is black-and-white, or using stylized fonts instead of standard characters. Such discrepancies can lead to office actions requiring correction or, in severe cases, jeopardize the link between the international registration and the basic mark.

Second comparison: nominal

The applicant name on an international application must match the registrant or applicant name of the basic trademark. Common scenarios for name mismatches include: a company has changed its name but hasn't updated the basic trademark, different affiliated companies within a group hold domestic trademarks and file international applications separately, or there is an inconsistent correspondence between Chinese and English names. The safest approach is to verify the basic trademark's records before filing. If the name has changed, complete the domestic name change first, then proceed with the international application.

Third Comparison: Products and Services

The rule is clear: narrowing is allowed, but widening is not. The goods and services designated in an international application must be a subset of the scope of the basic trademark; they cannot exceed it. For example, if the basic trademark covers ten items, the international application may select only five of them, but cannot add an eleventh.

Narrowing is not just an "acceptable concession"—it's a key strategic tool. First, removing projects unrelated to overseas operations can reduce category-based fees. Second, tailoring product descriptions to fit specific countries' examination practices—such as the U.S. requirement for specificity and rejection of vague language—can increase approval rates. However, note that narrowing involves making reductions within the scope of your original trademark. Any attempt to use an international application to expand protection beyond that scope crosses the line.

The Cost of Inconsistency

The International Bureau conducts a formal examination of classification, fees, and information completeness. If irregularities are found, the applicant is notified to correct them, typically within a three-month period. While this may appear to offer a chance for remedy, correction consumes valuable time: as explained in Chapter 15, the international registration date is directly tied to when the application documents reach the International Bureau. Delays caused by corrections can push back the entire starting point of your rights.

There is also a long-term rationale: During the five-year dependency period, an international registration remains tied to its basic mark. The more robust the consistency, the clearer and more controllable the transmission of any fluctuations from the basic mark to the international registration. Conversely, any inconsistency creates blind spots that make it difficult to pinpoint the source of risks during due diligence.

Verifying the drawings, names, and product lists line-by-line before submission is the most cost-effective risk control measure.

Fuzhou Mingzhi Trademark and Patent Agency (General Partnership)

IP professional agency filed with the China National Intellectual Property Administration

Integrity builds trust; knowledge drives action.

Fujian-based boutique IP firm specializing in niche industries. Core team members have over 10 years of experience, focusing on high-value services including cross-border patents, patent invalidation proceedings, and patent infringement litigation. We uphold the highest standards of professional practice, strictly conduct cross-research using Incopat and PatSeas, maintain a selective caseload, and refuse to accept abnormal patent applications involving mere drafting. We deliver strong protection and high win rates for specialized, innovative, and new enterprises.

Location: Fuzhou, Fujian

Core Business Areas: Domestic trademark registration and Madrid Protocol international trademark filing, patent application agency services, trademark refusal review and invalidation proceedings, IP litigation and enforcement, corporate IP strategic planning, and training.

[Keywords] Madrid trademark, Madrid System, Madrid Protocol, international trademark registration, WIPO International Bureau, exporting trademarks overseas, foreign trademark registration, Fuzhou trademark agency, Fuzhou intellectual property agency

Disclaimer: This article is for general industry education and does not constitute legal advice for specific cases. For case-specific guidance, please consult a qualified trademark agent.