Trademark registration under Madrid Protocol is a powerful option for brand owners seeking protection in multiple countries — including India. The “Madrid System” streamlines the process and can offer cost-effective, wide-ranging protection across jurisdictions. In this article, I explain how this international registration route works, how companies from India can use it, key steps, benefits, limitations and practical tips for success.
What is the Madrid Protocol and Why It Matters?
The Madrid Protocol is an international trademark registration system managed by World Intellectual Property Organization (WIPO). Through it, a brand owner can file a single application and seek protection in many countries at once, rather than filing separate national applications in each jurisdiction. This scheme reduces duplication of effort, lowers administrative costs, and simplifies management of trademarks across global markets. For businesses aiming for international reach or export it offers a practical route to secure brand rights worldwide. When a trademark is extended to India via the Madrid System, the national registry under Controller General of Patents, Designs and Trade Marks (CGPDTM) examines it under Indian law, before granting protection.
Who Can Use the Madrid Protocol and What’s a “Basic Mark”?
Not every brand owner can directly file an international application under the Madrid Protocol. There are eligibility criteria:
- The applicant must be a national, domiciled or have a real and effective business or commercial establishment in a Madrid-System member country.
- Importantly, the applicant must already hold a “basic mark” — either a national or regional trademark registration (or a pending national application) in the home country (the “Office of origin”).
- The international application must reproduce the same mark and list of goods/services as the basic national application or registration.
For Indian brand-owners: this means you must first apply or register the mark with the national registry under CGPDTM before using the international route.
How Trademark Registration under Madrid Protocol Works?
Here is an overview of the process of filing an international application under the Madrid Protocol, as applied to India and globally:
1. File or have a valid national/regional registration (the Basic Mark)
You first file an Indian trademark application or have a granted registration. This serves as the basis for international registration.
2. Submit International Application via Office of Origin
You then file a single “international application” using Form MM2 (or other prescribed form) at your national trademark office (in India, CGPDTM acts as Office of Origin). The application can be filed in English, French, or Spanish, and fees are paid in Swiss francs (standard under Madrid System).
3. WIPO Examination and International Registration
WIPO’s International Bureau checks formal requirements. If all is in order and fees paid, the mark is recorded in the International Register and published in the WIPO Gazette of International Marks. A certificate of international registration is issued.
4. Notification to Designated Member Countries
WIPO notifies the trademark offices of the countries you designated. Each designated office then carries out its own substantive examination under domestic laws as if you had filed directly in that country.
5. Grant or Refusal — Time Limits Apply
Each designated country has a time window (commonly up to 12 or 18 months) to accept or refuse protection. If no refusal is issued within this period, the mark is deemed registered in that country, with rights equivalent to national registration.
6. Maintenance, Renewal and Changes — Centralised Management
Once registered internationally, renewals, assignments, name or address changes, licences, and other formalities can be managed centrally via WIPO, simplifying global brand management.
Benefits of Using the Madrid Protocol for International Trademark Protection (H2)
Using the Madrid System offers several key advantages:
- Single Submission, Multiple Countries: A single application covers all designated countries. No need for separate filings in each jurisdiction.
- Cost Efficiency: Lower filing and maintenance costs compared to multiple national applications. Particularly for businesses seeking protection in many countries.
- Centralised Management: Renewals, assignments, name changes, licences — all can be managed via one system. This reduces administrative burden and improves compliance.
- Flexibility to Add Countries Later: You can expand protection to more countries after the initial registration by filing a simple form. This helps businesses scale as they grow internationally.
- Uniformity: Once a designated country grants protection, the rights in that country are equivalent to those from a direct national registration.
For Indian businesses and brands looking at export or global reach — this makes the Madrid route especially appealing and efficient.
Limitations and Risks of International Registration under Madrid (H2)
While the Madrid Protocol offers many advantages, there are certain drawbacks and risks to consider carefully:
- If the home (basic) application or registration is cancelled or revoked, the international registration loses its effect in all designated countries.
- Some designated countries may issue provisional refusals. Then, owners must respond under local law — often requiring local representation.
- The scope of goods and services must match exactly with the basic mark. Any expansion in scope requires fresh national filings.
- Protection only extends to Madrid-Protocol member countries. Countries outside the system need separate filings.
- Delay risk: if national offices (including India) are slow or overburdened, the 12–18 month examination could delay protection.
Thus, using Madrid requires clear strategy, awareness of local laws, and sometimes local legal support.
Applying to India: Important Considerations for Indian Applicants (H2)
For Indian businesses or brand owners wishing to use the Madrid Protocol, you must follow certain requirements under Indian law and procedural guidelines:
- You must have a valid Indian trademark application or registration (basic mark) before filing international application.
- The application must be filed via the Indian Trademark Office (CGPDTM), which verifies and forwards it to WIPO.
- Once WIPO records the international registration and notifies India, India assigns a national number (often prefixed “IRDI”) and processes under Indian law for protection.
- If the Indian office raises objection or provisional refusal, it must communicate to WIPO within 18 months. Failure to respond may result in refusal for India.
Because of these dual layers — international and national — brand owners in India must ensure both sets of requirements are properly met.
When the Madrid Route Makes Sense — and When It May Not (H2)
1. When It Makes Sense
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- If you intend to expand to multiple countries simultaneously.
- If your brand operates globally or you plan to export.
- If you value simplified administration, central renewal and a single application process.
- If you expect to manage assignments, name changes or licences across jurisdictions.
2. When It May Not Be Ideal
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- If you intend to protect only in India — then national filing is more straightforward.
- If the basic mark status is uncertain or under litigation.
- If you plan to expand the goods/services list — because international registration must mirror the basic mark.
- If some target countries are not members of Madrid — you may need separate national filings anyway.
How to Maximise Success with Madrid Registration – Practical Tips?
- Begin with a robust, well-drafted national trademark application to serve as a clean basic mark.
- Ensure exact match in mark representation, name, applicant details, and class list when filing international application.
- Use the official e-filing portal for India when filing via India as Office of Origin.
- Monitor the notification period (12–18 months) for each designated country and respond promptly to any provisional refusals.
- Maintain proper documentation and evidence of use, especially if enforcement or assignment arises.
- Consider incremental expansion: start with your priority markets, then add others later through the same international registration.
- Keep track of renewal dates centrally via WIPO; this helps avoid missing deadlines across jurisdictions.
If you are new to international filings or need help navigating objections or renewals, you may want to consult a recognised best trademark lawyers in India for guidance and representation.
Conclusion
Trademark registration under Madrid Protocol offers global brands a simplified, efficient and scalable way to protect their intellectual property across multiple jurisdictions. For Indian brand owners, using this international registration system often offers major advantages provided the basic mark requirements are met and domestic compliance is ensured.
By following proper procedure and planning strategically from initial national filing to international application businesses can secure broad trademark protection with reduced costs and administrative burden. If you plan to expand globally, international trademark filing and registration under the Madrid System can be a strategic tool to safeguard brand identity and business growth worldwide.
Frequently Asked Questions (FAQs)
Can I file an international application under Madrid immediately after filing a national application in India?
Yes. The national application (or registration) forms the “basic mark”. Once filed, you can apply internationally under Madrid Protocol.
In which languages can I file a Madrid international application?
You can file in English, French or Spanish.
How long does it take for a designated country to accept or refuse protection?
Typically, between 12 to 18 months. If no response is received within that timeframe, protection is deemed granted under most jurisdictions.
Does registration under Madrid Protocol offer the same rights as a direct national registration?
Yes. Once a country grants protection, the rights are identical to a direct national registration.
What happens if my basic national application in India is denied or cancelled later?
The international registration becomes vulnerable. Cancellation of a basic mark may lead to invalidation of the international registration across designated countries.
