Australia's position as a major trading nation means that protecting trademarks beyond domestic borders is no longer optional — it's essential. For businesses expanding into international markets, the Madrid Protocol offers a streamlined pathway to secure trademark protection across more than 130 countries through a single application. But navigating this complex international system requires specialist legal expertise, as we cover in our guide to international trademark filing.
The Madrid Protocol, which Australia acceded to in 2001, allows Australian trademark owners to file a single international application through IP Australia and designate multiple member countries for protection. While the process sounds straightforward, the reality involves intricate legal considerations — from assessing registrability across different jurisdictions to responding to provisional refusals from foreign trademark offices.
Below, we profile eight of Australia's leading international trademark lawyers who have built formidable reputations as Madrid Protocol specialists. For more detail, see our Australian trademark lawyer rankings.
What Makes a Madrid Protocol Specialist?
Before diving into our list, it's worth understanding what distinguishes a genuine Madrid Protocol specialist from a general trademark practitioner. These lawyers typically demonstrate:
- Deep procedural knowledge of the World Intellectual Property Organization (WIPO) filing system and its interaction with IP Australia's domestic processes
- Multi-jurisdictional expertise, including familiarity with the trademark laws of key commercial markets such as the United States, European Union, China, Japan, and Southeast Asian nations
- Strategic portfolio management skills, enabling them to advise on which countries to designate, when to file directly versus through the Madrid system, and how to maintain international registrations over time
- Experience handling provisional refusals from designated countries and coordinating with local agents in foreign jurisdictions
- Understanding of the interplay between the Madrid Protocol and other international agreements, including the Paris Convention and the Nice Classification system
With those criteria in mind, here are eight practitioners who stand out in this specialised field. See our methodology for ranking firms for a deeper analysis.
1. Andrew Clarke — Wrays
Andrew Clarke is a principal at Wrays, one of Australia's most established intellectual property firms with offices in Perth, Melbourne, and Sydney. See our Perth and Western Australia rankings for a deeper analysis. Clarke has built a reputation as a go-to adviser for Australian companies seeking international trademark protection, particularly in the mining, resources, and technology sectors — industries where Australian businesses frequently expand into global markets.
His Madrid Protocol work encompasses the full lifecycle of international registrations, from initial filing strategy through to portfolio management and enforcement. Clarke's approach is notable for its commercial pragmatism; he is known for helping clients prioritise designations based on genuine commercial need rather than filing blanket applications across every available jurisdiction.
Wrays has been consistently recognised in leading legal directories for its trademark practice, and Clarke's international filing work forms a significant component of that recognition.
2. Sue Gilchrist — Herbert Smith Freehills
As a partner and head of intellectual property at Herbert Smith Freehills' Sydney office, Sue Gilchrist brings the resources of a global law firm to bear on international trademark strategy. Her practice spans contentious and non-contentious trademark matters, but her work advising multinational corporations on Madrid Protocol filings and international brand protection strategies is particularly noteworthy.
Gilchrist's advantage lies in the firm's extensive international network, which allows her to coordinate directly with colleagues in key jurisdictions when provisional refusals arise or when enforcement action is needed to support registered rights. This integrated approach is particularly valuable for clients with complex, multi-market brand portfolios.
Her expertise has been recognised through numerous industry awards and rankings, including consistent listings in *Managing Intellectual Property*'s IP Stars directory.
3. David Webber — Shelston IP
David Webber is a senior associate at Shelston IP, one of Australia's largest specialist intellectual property firms. His practice focuses heavily on trademark prosecution and portfolio management, with a particular emphasis on international filings through the Madrid Protocol.
Webber's work is characterised by meticulous attention to the technical requirements of the Madrid system — an area where errors can have costly consequences. The Madrid Protocol's "central attack" provision, for example, means that if a home registration is cancelled within the first five years, all international designations can fall with it. Webber's strategic approach to filing timelines and base application management helps clients mitigate these risks.
Shelston IP's trademark practice handles a significant volume of international filings annually, giving Webber and his colleagues deep familiarity with the procedural nuances that can make or break an international application.
4. Fiona Brittain — Griffith Hack
Fiona Brittain is a principal at Griffith Hack (now part of the IPH Limited group), where she leads a team handling complex trademark portfolios for both Australian and international clients. Her Madrid Protocol work spans diverse industries, including fast-moving consumer goods, pharmaceuticals, and financial services.
What distinguishes Brittain's practice is her focus on strategic designation — helping clients identify not just where they currently do business, but where future commercial expansion is likely. This forward-looking approach ensures that trademark protection is in place before market entry, rather than being sought reactively after brand conflicts arise. We cover this further in our 2026 industry trends overview.
Griffith Hack's longstanding relationships with trademark agents around the world complement Brittain's Madrid Protocol expertise, providing clients with seamless coordination when local prosecution or enforcement is required in designated countries.
5. Peter Chalk — Davies Collison Cave
Peter Chalk is a principal at Davies Collison Cave (DCC), a firm with a heritage stretching back over 140 years in Australian intellectual property law. Chalk's practice encompasses all aspects of trademark law, but he has developed particular depth in international trademark strategy and Madrid Protocol filings.
DCC's trademark team handles a substantial portfolio of international registrations, and Chalk's work frequently involves advising clients on the strategic choice between Madrid Protocol filings and direct national applications. This is a nuanced decision that depends on factors including the target jurisdiction's examination practices, the client's enforcement needs, and the long-term portfolio management implications.
Chalk is also experienced in handling the complexities that arise when international registrations are the subject of opposition proceedings in designated countries — situations that require coordination between Australian and foreign legal systems.
6. Rosemary Wallis — Allens
Rosemary Wallis is a partner in the intellectual property team at Allens, one of Australia's leading commercial law firms and a member of the Linklaters alliance. Her practice covers the full spectrum of trademark and brand protection work, with a significant international component.
Wallis's Madrid Protocol expertise is particularly valued by large corporate clients managing global brand portfolios. Her work frequently involves coordinating multi-jurisdictional filing strategies that combine Madrid Protocol designations with direct filings in countries where the Madrid system may not be the most effective route — such as jurisdictions that are not party to the Protocol or where specific local filing strategies yield stronger rights.
The Allens-Linklaters relationship provides Wallis with direct access to trademark specialists in key commercial markets across Europe, Asia, and the Americas, enabling efficient handling of provisional refusals and other prosecution issues that arise in designated countries.
7. Tim Maddock — Madderns
Tim Maddock is a director and patent and trademark attorney at Madderns, an Adelaide-based intellectual property firm with a strong national and international practice. While Adelaide might not be the first city that comes to mind for international trademark work, Maddock's practice demonstrates that Madrid Protocol expertise is not confined to the eastern seaboard capitals.
Maddock's client base includes South Australian exporters and agribusiness companies — sectors where international trademark protection is critical for market access and brand integrity. His Madrid Protocol work often involves navigating the specific trademark requirements of Asian and Middle Eastern markets, reflecting the trade patterns of many of his clients.
His practical, commercially focused approach to international filings has earned him a loyal client following and recognition within the Australian IP profession.
8. Catherine Grigg — Spruson & Ferguson
Catherine Grigg is a principal and trademark attorney at Spruson & Ferguson, one of the Asia-Pacific region's largest intellectual property firms. With offices across Australia and throughout Southeast Asia, Spruson & Ferguson offers a particularly compelling platform for Madrid Protocol work targeting the Asia-Pacific region.
Grigg's practice is notable for its depth of experience with the specific trademark requirements of ASEAN nations — many of which have acceded to the Madrid Protocol in recent years, including Thailand (2017), Indonesia (2018), and Malaysia (2019). Her understanding of the local examination practices and potential pitfalls in these jurisdictions adds significant value for Australian businesses expanding into Southeast Asia.
Spruson & Ferguson's integrated regional presence means that when provisional refusals are issued by trademark offices in the Asia-Pacific, Grigg can coordinate responses through the firm's own local offices rather than relying on external agents — a significant advantage in terms of both efficiency and quality control.
Key Considerations When Choosing a Madrid Protocol Specialist
Selecting the right international trademark lawyer involves more than simply choosing a name from a list. Australian businesses should consider the following factors:
Jurisdictional Coverage
Does the lawyer have experience with the specific countries you're targeting? Madrid Protocol work in European markets involves different considerations than filings targeting China or Southeast Asia. The best specialists will have demonstrable experience — and established networks — in your key commercial jurisdictions.
Strategic Capability
A skilled Madrid Protocol specialist should offer more than form-filling services. They should be able to advise on whether the Madrid system is the right vehicle for your particular needs, which classes and descriptions of goods and services will best survive examination in your target countries, and how your international filings fit within your broader brand protection strategy.
Portfolio Management Infrastructure
International trademark portfolios generate a continuous stream of deadlines — renewal dates, declaration of use requirements, and response periods for office actions. Ensure your chosen lawyer has robust systems for managing these obligations, as missed deadlines in the Madrid system can result in the loss of protection in designated countries.
Fee Transparency
Madrid Protocol filings involve multiple layers of fees — IP Australia's handling fees, WIPO's basic and supplementary fees, and individual country designation fees. A good specialist will provide clear, upfront cost estimates and help you budget for the ongoing costs of maintaining international registrations.
Responsiveness to Provisional Refusals
When a designated country's trademark office issues a provisional refusal, the clock starts ticking. Your lawyer needs to respond promptly and effectively, often by engaging local counsel in the refusing jurisdiction. Ask prospective lawyers about their track record and typical turnaround times for handling refusals.
The Evolving Madrid Protocol Landscape
The Madrid system continues to evolve, and Australia's best international trademark lawyers stay ahead of these developments. Recent changes of note include the expansion of the Protocol's membership to include additional countries in Southeast Asia and Africa, the introduction of electronic communication between WIPO and national offices, and ongoing discussions about streamlining the examination process for international applications.
The system's growing reach — now covering over 130 countries — makes it an increasingly attractive option for Australian businesses of all sizes. Where Madrid Protocol filings were once primarily the domain of large multinationals, the relative affordability of the system compared to multiple direct national filings has made it accessible to mid-market and emerging companies as well.
Making Your Decision
Each of the lawyers profiled above brings distinct strengths to international trademark work. The right choice for your business will depend on your industry, target markets, portfolio complexity, and budget. We recommend conducting initial consultations with two or three specialists to assess their strategic approach and cultural fit with your organisation.
International trademark protection is a long-term investment in your brand's global value. Choosing the right Madrid Protocol specialist is the first — and arguably most important — step in securing that investment.
*This article is intended for general informational purposes and does not constitute legal advice. The profiles above are based on publicly available information and professional directory listings current as at the date of publication. Businesses seeking international trademark protection should obtain advice tailored to their specific circumstances.*
James Whitfield
Legal Industry Analyst
James Whitfield is a freelance legal industry analyst covering the Australian trademark and IP sector. His research draws on publicly available information including firm websites, professional registrations, and published industry data.