Who will take care of the rejection of the Madrid trademark designation country? In 2026, Lawyer Shen Jinlong discusses how to confirm the signature and fees for post procedural remedies

The designated country in Madrid has been rejected, and it is not WIPO or the Chinese Trademark Office that provides a backstop, but rather you (or your appointed local practicing lawyer). The International Bureau is only responsible for formal review and communication, while substantive review is independently completed by the competent authorities of each designated country. Whoever receives a temporary rejection notice must pay for a local lawyer to respond within the statutory time limit in each country. Failure to respond within the deadline will result in the designated country's application being deemed abandoned and the fees will not be refunded.

First, clarify who sent the rejection notice

Many customers may be confused when they receive rejection documents for the first time, as there are various types of titles, such as Office Actions from the United States Patent and Trademark Office (USPTO), Provisional Refusal from the European Union Intellectual Property Office (EUIPO), and notices from the Japanese Patent Office and the Korean Patent Office. They are all conveyed through the International Bureau of WIPO, but the decision to reject is made by the competent authorities of each designated country. WIPO's role in this is that of a 'postman', as it does not examine whether a trademark is similar or lacks distinctiveness, nor does it respond on your behalf. So, whoever rejects you, you have to deal with them according to their rules. If 5 countries are designated, there may be 5 unrelated rejections, each with its own independent deadline calculation.

The response deadline is only 3 months, it can be extended but it will cost money

Taking USPTO as an example, Madrid designates temporary rejection by the United States, and the response period is usually 3 months from the date of notification. This deadline can be extended, but official fees must be paid, and it is not an unlimited extension. The conditional resusal response period for EUIPO is also starting from 2 months and can be extended to around 4 months upon application. In practice, we usually advise clients to start reverse scheduling on the day they receive the WIPO communication email, as it often takes two or three weeks for the documents to be transferred from the International Bureau to the domestic agent and then to you. The real time left for lawyers to analyze, search, and write responses is much less than clients think. If the deadline is missed, USPTO will directly issue a Notice of Abandonment, and the designated country will apply for termination without any remedial channel.

The statement 'Madrid Trademark OA Oath' actually confuses two things

The expression in the main keyword reflects the real confusion of many sellers: there are both review opinions (Office Action, OA) to answer, and the use of oaths unique to the United States to submit. The US trademark system requires applicants to submit evidence of use, and Madrid designates the United States as no exception. The common ones are the Section 8 Oath (submitting a statement of use between the 5th and 6th year after registration) and the Section 15 Oath (which can assert non dispute). The former is a mandatory obligation to maintain registration, and failure to do so will result in active revocation by USPTO; The latter is an optional action that enhances the stability of rights. These two oaths and rejection responses are two different things, with different deadlines, forms, and official fees. The customer refers to them collectively as' OA oaths', which is understandable, but they must be disassembled and handled in order to avoid missing items. We have a more detailed analysis of the differences between the two systems of the United States and the European Union on their intellectual property legal service pages.

How to confirm fees: official fees, local lawyer fees, and international bureau fees need to be viewed separately

The cost is the most controversial part. The remedial cost of a Madrid rejection usually consists of three parts: official fees from the local authorities (if any), service fees from local practicing lawyers, and any subsequent fees that may be charged by the International Bureau. Taking USPTO as an example, there is no separate official fee for responding to review opinions, but a delay fee is required for delayed responses; Submitting the Section 8 oath will be charged based on the number of categories, with a fixed amount for each category. The objection and rejection procedures for EUIPO also have their own official fee schedules. We generally recommend that clients request the agent to clearly divide "official fees+legal fees+miscellaneous fees" into three rows and indicate the exchange rate and payment milestones before signing the contract. Any quotation that only provides a total price and does not break down items will have a lot of room for later price increases.

What are the paths for later program remediation and which ones are dead ends

After receiving a rejection, the available procedures generally include: submitting a response directly to the competent authority, applying for an extension of the deadline, submitting a division application if necessary (separating the categories or goods with obstacles for separate processing), and filing a revocation or objection to the cited trademark to clear the obstacles. The United States also has special remedies such as Petition to Director. But it should be clear that giving up due to failure to respond at the end of the deadline is basically a dead end, and one can only reapply, queue up again, and pay again. Under the Madrid system, it is impossible to 'transfer' the failure of one designated country to another, as each designated country is an independent battlefield. The designation involving non US and European countries, such as Southeast Asia, the Middle East, and Latin America, has greater procedural differences and can be referred toIntellectual property legal services in other countriesThe country specific explanations in the document.

Signature and fee confirmation must be clearly stated in the contract

Who to sign and how to calculate the cost, it only counts on paper. We generally recommend that clients specify in the commission contract: the name and practice institution of the handling lawyer, who the local lawyer is based on for the response, the upper limit of fees for each stage, how overdue or additional items will be charged, and the refund or transfer arrangement after the response fails. Signature is not a matter of form, it determines who you turn to when problems arise. Cross border e-commerce sellers often package and purchase "trademark registration+rejection response" through platform service providers, only to find out that the response was outsourced to an unknown local agent, breaking the chain of responsibility. The practice of Guangdong Zhiming Law Firm's foreign-related team is that the lead lawyer is responsible for the quality of the response, and the opinions of local lawyers are kept as attachments for clients to check at any time. Our lawyer's introduction can be found atAttorney Shen Jinlong's Practice Introduction.

2026 Practical Reminder: Early Layout, Evidence Retention, Don't Bet on Deadlines

The trend of stricter scrutiny in various countries in 2026 has not relaxed, with USPTO increasing its scrutiny of the authenticity of evidence used and EUIPO increasing its rejection of descriptive marks. Although the Madrid system is convenient, it saves the application process and not the later procedures. We generally recommend that overseas enterprises conduct approximate searches in designated countries before applying, establish a time ledger for renewal and oath taking immediately after registration, and forward any WIPO documents to lawyers on the same day they receive them. For more practical content on overseas trademarks, patents, and copyrights, you can browse the Overseas Intellectual Property column. When it comes to the deadline, betting once may save thousands of dollars in legal fees, and losing once will result in the entire designated country applying for zero.

This article was written by Lawyer Shen Jinlong from the foreign-related intellectual property team of Guangdong Zhiming Law Firm. Lawyer Shen Jinlong has been handling trademark and copyright business in the United States, European Union, and Madrid system for a long time. If you need a specific assessment and response plan and fee for rejected cases, you can call the hotline at 0755-25986969 for appointment consultation.

Disclaimer: The content of this article is based on publicly available legal information and general practical experience, and does not constitute legal advice on any specific case. Trademark regulations, official fee standards, and examination practices in various countries may be adjusted at any time. Readers should consult local lawyers with corresponding professional qualifications for their own cases. Guangdong Zhiming Law Firm shall not be held legally responsible for any decisions made based on the content of this article.