Lawsikho Blog

In this article, I will guide you step-by-step on how to file an international trademark through the Madrid Protocol, specifically if you are applying from India. I will also walk you through using the WIPO website for filings and portfolio management, and I will include practical tips drawn from real experiences. Whether you are a trademark attorney assisting clients or a business owner protecting your own brand, this guide will help you navigate the international trademark landscape with confidence.

Introduction

When I began assisting clients with their intellectual property portfolios, something that came up more often than I expected was, “How do I protect my brand internationally?” 

It is a fair concern. You spend years building a product and identity. You may be protected in India, but how to protect your product outside of India too?

If you are planning to expand your business beyond India, perhaps to the United States, Europe, the Middle East, or Southeast Asia, then it may be because—

i. You want to scale up and get your business to reach more people, or

ii. You want to do it out of necessity.

Because what if someone outside of India starts profiting from your idea?

Fortunately, there is a streamlined system to help you do that without filing separate trademark applications in every jurisdiction. It is called the Madrid Protocol, and it is administered by the World Intellectual Property Organization (WIPO).

But what exactly is this protocol, and how does it help you?

You can think of it as an international filing system. And lucky for you, this is the easier route.

A more tedious process would be applying for your trademark individually in each country, hiring different lawyers, translating documents, paying varying fees, filing one application, paying one set of fees, and choosing the countries where you want protection.

But all of that can be avoided. 

India became a part of the Madrid Protocol in 2013. Since then, so many Indian businesses have used the system to secure their trademarks in foreign markets. 

It is not just for large companies with international legal teams. Even a solo founder or small business owner can file an international application, as long as the prerequisites are met.

Understanding the Madrid System

Before we delve into the actual filing process, it is important that you and I are on the same page about what the Madrid System really is and what it is not.

There is a common misconception that the Madrid System is a global trademark. That is not true. There is no such thing as a single “worldwide trademark” that covers every country in one go. Instead, what the Madrid System offers is a centralised and efficient method to apply for trademark protection in multiple countries at once. This is achieved by filing what is called an international application, which is then examined separately by the trademark offices of each designated country.

Administered by the World Intellectual Property Organization (WIPO), the Madrid System operates under two international treaties:

1. The Madrid Agreement (1891), and
2. The Madrid Protocol (1989), which modernised and expanded the system.

India is a member of the Madrid Protocol, and that is the treaty under which Indian applicants can seek international trademark protection.

Now, what makes the Madrid System appealing is its efficiency. 

When you file an international application through this system, you need to submit only one application, pay one set of fees, and use one language (English, French, or Spanish; India uses English).

While the initial application is filed in one language, designated countries may require local language translations or responses for certain stages

Instead of approaching each country’s IP office separately, the Madrid System lets you designate one or more member countries (currently over 110) where you want your trademark protected. Once your international application is filed and accepted by WIPO, it is sent to the individual IP offices of those countries for examination under their local laws.

Let me explain this to you better with an analogy: 

You can think of the Madrid System as a courier service. You prepare a single package, your international application, and send it through WIPO. WIPO then distributes it to each destination country you selected. Each country still has the right to open the package and examine its contents based on its own rules, but you have saved considerable time, effort, and cost by sending one consolidated parcel.

However, keep in mind that this system does not guarantee automatic approval in every country. Each national office has up to 12 or 18 months (depending on the country) to either accept, raise objections, or refuse protection. You may need to respond to their objections separately. However,  having a unified filing and management platform simplifies much of the logistical burden. In essence, the Madrid System helps you spend more time building your brand globally and less time buried in administrative paperwork.

Keep in mind that 18 months is the typical timeframe under the Madrid Protocol, with potential variations for specific jurisdictions. 

Pre-requisites for Indian Applicants

Before you or I can initiate an international trademark application through the Madrid Protocol, there are certain foundational requirements that must be fulfilled under Indian law. These are not optional; they are critical. If even one element is missing or incorrect, your international application will not proceed beyond the Indian Trademark Office.

Let me walk you through each of these pre-requisites, so that you can ensure your client, or your own brand, is eligible and ready.

A basic Indian application or registration

The most important requirement is the existence of a basic mark in India. This means that you must already have:

• A pending trademark application, or
• A registered trademark with the Controller General of Patents, Designs and Trade Marks (CGPDTM), India.

Your international application will be entirely based on this basic mark. 

So what does this mean? 

It means that you need to have an application in India. It acts as the foundation for the entire Madrid Protocol process. 

WIPO will not entertain an international application from India unless it is linked to an existing Indian application or registration.

This also means that if there are any errors, deficiencies, or rejections in your Indian application, those issues may directly affect your international registration. You are building your international filing on top of what you have filed in India, so it must be accurate, properly classified, and robust.

Also, the basic mark must remain valid for five years from the date of the international registration. This is to avoid risks to the international registration

The identity of the applicant must match

The applicant for the international trademark must be the same person or entity as the applicant (or owner) of the basic mark. This means you cannot change names, add partners, or switch proprietorships between the Indian filing and the Madrid application. WIPO and the Indian office will reject the application if there is a mismatch.

If you are filing on behalf of a company, you will need to make sure the company’s legal name, address, and constitution (Private Limited, LLP, etc.) exactly match the records of the Indian IP office. Even minor discrepancies, like a missing word in the company’s name, can delay or derail the application.

Goods and services must be identical or narrower

This is where many applicants make avoidable mistakes. The goods and services you list in the international application must be identical to or narrower than what you have claimed in your Indian application. You cannot add new items or expand the scope internationally.

So let us take Classes 25 and 26 for example. 

For instance, if your Indian trademark is filed under Class 25 for “parts of clothing – footwear, headwear”, etc, now you cannot suddenly include “embroidery and other works” in your international application. Because these are separate classes. 

If you have picked sarees, you can, however, limit your list to only “sarees” or “handloom sarees,” which are narrower descriptions within the original scope.

It is a good practice to review your Indian specification in advance and revise it through amendment, if needed, before proceeding internationally.

You must be entitled to file in India

There are certain things that have to be fulfilled – 

1. Only those who have a real and effective industrial or commercial establishment in India, or 
2. are domiciled or nationals of India, can file through the Indian IP office under the Madrid Protocol. 

Okay, so this requirement is usually and easily met if you are already operating a business in India.

But what if you are managing your Indian business from abroad? Or if the principal office is elsewhere?

Now is the time for you to start examining whether India qualifies as your Office of Origin.

In my experience, it is safest to consult the Indian trademark records. You do this to ensure that the address for service in India and the principal place of business are clearly listed and updated.

Meeting these pre-requisites is very necessary and is not just about ticking boxes. This must be proper because it sets the stage for everything that follows. I hate to break it to you, but the strength of your international application depends entirely on how well-prepared your Indian documentation is. If you take the time to get this right, you will save yourself time, cost, and frustration later.

Step-by-step procedure to file an International Trademark from India

The prerequisites you need to have in place are:

•  the basic Indian mark, 
• matching applicant details, and 
• a precise list of goods or services, 

Once you have them, it is time to begin the actual filing process. If you are approaching this for the first time, let me walk you through it carefully, stage by stage, so that you know exactly what to expect and how to prepare.

Step 1: Prepare the International Application (Form MM2 (E))

The international application must be submitted using Form MM2 (E), which is the official format prescribed by the Madrid Protocol. Now, while it is a WIPO form, you do not send it directly to WIPO. As an Indian applicant, you are required to route it through the Indian Trademark Office, which acts as the “Office of Origin.”

To avoid manual errors and inconsistencies, I recommend using WIPO’s Madrid Application Assistant. This online tool helps you generate the Form MM2 (E) efficiently, pulling key data directly from the Indian trademark database.

What you will need:

• The Indian application or registration number (your basic mark)
• A clear identification of goods and services
• The list of countries (Contracting Parties) where you seek protection
• An authorised representative’s details, if applicable
• A reproduction of the mark (word or logo), exactly as it appears in the Indian filing

The tool generates a PDF version of Form MM2 (E), ready for submission.

Step 2: Submit Form MM2 (E) to the Indian IP office

Once you have prepared the form, you must file it with the Indian Trademark Office. In India, international applications under the Madrid Protocol are submitted electronically via the official IP India website.

You can find it here. 

Here, you will need to:

• Upload the completed Form MM2 (E) (PDF)
• Attach the required Power of Attorney if filing through an agent
• Make the payment of the prescribed handling fee 

Handling fee for international applications under the Madrid Protocol, as processed by the Indian IP Office, is ₹5,000 per application, regardless of the number of classes or the applicant’s size.

You will receive an acknowledgement from the IP office confirming the submission.

Step 3: Certification by the Indian Trademark office

After submission, the Indian Office will review your international application and certify that:

• It is based on an existing Indian application or registration,
• The details are consistent with the Indian records, and
• The mark and goods/services match those in the basic mark.

If the application passes this review, it is certified and forwarded electronically to WIPO. This is a crucial stage. If there is any inconsistency, wrong classification, mismatch in applicant’s name, or incorrect mark image, your application may be returned or delayed..

Step 4: Formal examination by WIPO

Once your certified application reaches WIPO, the International Bureau conducts a formal examination. This examination is not substantive, it simply checks that the application meets procedural requirements under the Madrid Protocol.

If all is in order, WIPO:

• Records your mark in the International Register,
• Issues an International Registration Number, and
• Publishes the mark in the WIPO Gazette of International Marks

At this point, your application is officially recognised as an international registration. However, this does not mean your mark is yet protected in the countries you designated.

Step 5: Substantive examination by designated countries

After registration, WIPO transmits your application to each of the national IP offices you selected, which are called designated Contracting Parties.

Each of these offices examines your application based on its own trademark laws. For example:

• The USPTO (United States) will check for distinctiveness and conflict with existing marks.
• The EUIPO (European Union) may assess whether your mark is descriptive in any EU language.
• The JPO (Japan) may evaluate cultural sensitivities or character script issues.

These offices have 12 or 18 months to communicate either a grant of protection or a provisional refusal. If no objection is raised within this period, your mark is automatically protected in that country.

Keep in mind that there can be post-registration challenges, such as oppositions, can still occur in some jurisdictions.

If a refusal is issued, you will need to respond through a local attorney in that country, following local procedures. WIPO itself plays no role in resolving refusals.

By following these five steps- prepare, submit, certify, register, and respond you can file an international trademark through the Madrid Protocol in a structured and legally sound manner. It does require patience and attention to detail, but once you complete it, you gain centralised control over your international trademark portfolio with ease.

Madrid system: Filing international trademark applications

This is WIPO’s official guide to filing international trademark applications under the Madrid System. It provides comprehensive information on:​

• Eligibility criteria: Determining if you can use the Madrid System based on your connection to a member country. 
• Filing process: Outlining the steps to complete and submit your international application through your national IP office (Office of Origin).​
• Application requirements: Details on necessary documentation, fees, and formalities.​
• Post-filing procedures: Information on monitoring your application, responding to refusals, and managing your registration.​

This guide is essential for understanding the procedural aspects of international trademark registration. ​

Madrid system international application simulator

This interactive tool assists prospective applicants in assessing their eligibility and estimating the costs associated with filing an international trademark application. Key features include:​

• Eligibility assessment: Determining if you meet the criteria to use the Madrid System.​ You can check this here. 
• Market selection: Choosing target countries for trademark protection.​
• Cost estimation: Calculating the fees based on selected countries and classes of goods/services.​

The simulator is designed to provide a step-by-step overview, helping users make informed decisions before initiating the formal application process. ​

You can access the simulator here

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Both tools are integral to navigating the Madrid System effectively. The filing guide offers a detailed procedural roadmap, while the simulator provides a practical assessment of eligibility and costs

Fees and cost considerations

You definitely also need to consider the costs because filing an international trademark through the Madrid Protocol may appear cost-effective at first glance, but you must look beyond the initial figures. There are multiple layers to the fee structure, some charged in Indian Rupees, others in Swiss Francs (CHF), and a few that may arise later, depending on how your application progresses in different jurisdictions.

Let me break this down for you in a way that reflects how it actually unfolds in practice.

1. Fee payable to the Indian Trademark office (handling fee)

When you file the international application via the Indian Trademark Office, you must first pay a handling fee. This is a processing charge for certifying and forwarding your application to WIPO.

As of now, the handling fee is:

• INR 5,000 per class – for individuals, startups, and small entities
• INR 9,000 per class – for others (including large companies)

This amount is payable online when you submit Form MM2 through the Indian Madrid e-filing portal.

Remember, this is just the beginning. The real cost lies ahead, with WIPO.

2. Fees payable to WIPO

WIPO’s charges are set in Swiss Francs (CHF), and they depend on several variables:

• Whether your mark is word-only or includes a logo/graphic
• The number of classes of goods or services
• The Contracting Parties (countries or regions) you designate

WIPO’s fee structure comprises:

• Basic Fee:
  • CHF 653 (if the mark is only in black and white)
  • CHF 903 (if the mark is in colour) 
• Complementary Fee: CHF 100 per designated Contracting Party
  (except for those who charge individual fees)
• Supplementary Fee: CHF 100 per class beyond the third class

However, many countries, including the United Kingdom, the United States, and the European Union, do not accept the complementary fee. Instead, they charge individual fees, which are usually higher and set by their respective national IP offices. For instance:

• United States: around CHF 437 per class
• United Kingdom: around CHF 308 per class
• European Union: approximately CHF 897 for the first class, with additional charges for more classes

Fees are subject to change. WIPO provides a Fee Calculator on its website, which I strongly recommend using before you file. It gives a precise estimate based on your selection of countries, number of classes, and type of mark.

You can find it here. 

3. Currency exchange and payment

You must pay WIPO’s fees in Swiss Francs. If you are filing through the Indian IP Office, you will receive a communication from WIPO (via email or WIPO’s Madrid Portfolio Manager portal) directing you to make the payment.

Payment can be made:

• By credit card (international payments enabled)
• Through a WIPO Current Account (for frequent filers)
• Via bank transfer (though this may delay the process slightly)

You must ensure that the full amount reaches WIPO, including bank charges if any.

4. Post-filing expenses

Even after WIPO registers your mark, costs may arise in two situations:

The first one is provisional refusals. What is that? If a designated country objects to your application, you will likely need to engage a local attorney to file a response. Legal fees vary widely by jurisdiction. For example, there is a refusal by the USA. Responding to this may cost you anywhere between USD 500 to 1,500, depending on complexity.

Secondly, there are subsequent designations. So, what f you wish to extend your protection to additional countries later? Here, you may file a “subsequent designation,” which comes with its own set of WIPO and national fees.

In short, while the Madrid Protocol offers cost consolidation and administrative ease, definitely. But it is not necessarily “cheap.” You must budget not only for initial filings but also for potential objections, attorney costs, and future expansions. Planning this in advance, especially by prioritising countries based on business strategy, can help you avoid unexpected expenses and maximise your trademark protection globally.

Common mistakes and how to avoid them

By the time you reach the point of filing an international trademark via the Madrid Protocol, you will have a good idea of international filing in general. 

You would likely have spent a fair amount of time preparing your basic mark, checking your list of countries, and estimating your costs. However, even a well-prepared application can falter due to avoidable errors. I have seen applicants, some of them experienced, run into roadblocks simply because of minor lapses in detail or timing.

Let me take you through the most frequent mistakes and explain how you can steer clear of them.

1. Mismatch between the basic Mark and the international application

This is completely avoidable, so make sure that you do not do this. 

We already went through this in the beginning, where I mentioned that there should be consistency between the Indian Application and the International Application. 

So, when you have reached the part where you need to recheck everything, this also becomes important. 

One of the most common pitfalls is an inconsistency between your Indian application (or registration) and your international application. But the Madrid Protocol is very strict on this point. Your international application must replicate the exact details of the basic mark, including:

• The applicant’s name and address
• The reproduction of the mark
• The list of goods and services

If your international application lists more goods than the Indian application covers, it will be rejected. Even slight variations, such as a missing comma or a spelling inconsistency in your name, can lead to delays.

In order to avoid it, make sure you are always cross-checking the MM2 (E) form with your Indian filing. If you are using the WIPO Madrid Application Assistant, it helps prevent such discrepancies by pulling data directly from the Indian registry

2. Incorrect classification of goods and services

We covered this as well, but this is another common issue is misclassification under the Nice Classification system. If you describe your goods or services vaguely or select the wrong class, you may invite objections from the designated countries.

For example, describing your services as “technology services” is not enough. Without further specificity could trigger a refusal in jurisdictions, and this is what you are trying to avoid. Countries like the United States or Canada expect precise definitions.

In order to avoid this, use the Madrid Goods and Services Manager, a WIPO tool that helps you draft acceptable terms aligned with international standards. It also indicates which terms are likely to be rejected in certain jurisdictions.

3. Overlooking individual fees of certain countries

It is easy to miscalculate the cost of filing when you assume that all countries follow the complementary fee structure. Many key jurisdictions, including the United States, the European Union, China, and Japan, charge individual fees, which are often higher than the base fee.

So, how can you avoid this? Always run your intended filing through WIPO’s Fee Calculator. It is updated regularly and gives an accurate breakdown based on your selected countries.

4. Delayed response to provisional refusals

A provisional refusal from a designated country must be addressed within the specific deadline mentioned in the refusal notice. Miss this window, and your application in that jurisdiction will be deemed abandoned. Moreover, you must respond through a local representative; WIPO will not help you here.

In order to tackle this, as soon as you receive a provisional refusal, seek assistance from a local trademark attorney in that country. Do not delay. You can monitor all communications from WIPO through your Madrid Portfolio Manager account.

5. Assuming automatic global protection

A surprisingly common misconception is that international registration guarantees global protection. It does not. Each designated country has the right to examine your application independently and apply its national laws.

What can you do? Treat the Madrid Protocol as a centralised filing system, not a guarantee of global rights. Once WIPO completes its formalities, the substantive examination begins in each country. You must be prepared to address objections separately if they arise.

Avoiding these mistakes is not about being perfect, it is about being methodical and informed. If you take the time to understand the nuances, double-check your filings, and respond promptly to communications, you will save yourself both money and months of uncertainty.

Monitoring and managing your international registration

Once your international application is successfully registered, you might be tempted to sit back and relax. 

Unfortunately, I am going to tell you not to because this is the stage where many applicants lose steam and, as a result, lose protection. Filing the application is only the beginning; managing it is what ensures your trademark remains alive and enforceable across jurisdictions.

Let me walk you through what this involves and how you can stay on top of things without feeling overwhelmed.

1. Track the status using WIPO tools

You should keep a close watch on your international registration using WIPO’s Madrid Monitor. This free online tool allows you to:

• View the current status of your application or registration
• Monitor designations in each country
• Check for provisional refusals or other alerts
• Track deadlines and updates from national offices

All you need is your international registration number. I recommend bookmarking the page and checking it every few weeks, especially in the first 18 months after filing, which is the usual window for national examination.

You can do this here.

2. Responding to provisional refusals and office actions

A provisional refusal from a designated country is not the end of the road, but it does demand prompt action. When a refusal arrives, WIPO forwards the notice, but the responsibility for responding lies with you.

Here is what usually happens:

Firstly, you receive a letter from WIPO, often in the local language of the designated country. Then you must appoint a local representative to act before that country’s IP office. The representative prepares and files a response or an appeal within the stipulated time frame

These communications do not go through WIPO again. They happen directly between you (or your attorney) and the national office.

My advice for you would be to keep a shortlist of local IP attorneys in the countries you have designated. This way, if a refusal arises, you can act quickly and avoid last-minute panic.

3. Recording changes (name, address, ownership, etc.)

If anything changes your name, your business address, or even your trademark ownership, you must update the records with WIPO and the Indian Trademark Office.

The process is as follows:

• File the appropriate form (MM9, MM5, MM6, etc.) via WIPO
• Pay the applicable fee in Swiss Francs
• Wait for the change to be recorded and notified to the national offices

Failing to record changes could affect enforcement or renewal in the future. For example, if the trademark is sold to another company but the transfer is not recorded, the new owner may face issues enforcing it in certain jurisdictions.

4. Renewals: Keeping your registration alive

Your international registration lasts for 10 years from the date of registration, and you may renew it for additional 10-year periods. WIPO allows you to:

• Renew the entire international registration
• Renew only for some of the designated countries
• Drop countries you no longer wish to maintain protection in

You must pay the renewal fees directly to WIPO, again in Swiss Francs. A renewal reminder is usually sent by WIPO six months before expiry, but do not rely on that alone. It is safer to keep a personal calendar reminder at least eight months in advance.

During this period, if the basic application or registration in the Office of Origin (e.g., the Indian Trademark Office for Indian applicants) is invalidated, rejected, or cancelled, the international registration can be partially or wholly cancelled. This is known as a “central attack,” and its implications are significant

5. Subsequent designation: Adding more countries later

If you did not designate certain countries in your original application, you can file a subsequent designation later. This allows you to extend your existing international registration to additional countries without filing a new application from scratch.

This is useful if your business expands into new markets a few years after your initial filing. The process is similar to your first application: select the countries, file online, and pay the applicable WIPO and national fees.

In summary, managing an international registration is not difficult, but it requires vigilance. Think of it as maintaining a garden. You have already planted the seeds by filing, but is it done? No, now you must water, prune, and protect your rights to enjoy the long-term benefits. A well-maintained international registration can become one of your business’s most valuable intangible assets.

Strategic considerations for businesses

Filing an international trademark via the Madrid Protocol offers numerous advantages. But, it is essential to approach this process strategically. A well-thought-out international trademark strategy can significantly enhance your brand’s global presence, while a poorly managed filing can lead to costly mistakes and missed opportunities.

Let me take you through some key strategic considerations you should factor in when planning your international trademark journey.

1. Prioritising key markets for trademark protection

One of the first decisions you will need to make is where to file your international trademark. While the Madrid Protocol makes it easy to designate multiple countries, not every market may be relevant to your business in the immediate future.

For example, let us say that your primary target markets are in the European Union and the United States. It may not make sense to file in countries where you have no business operations yet, like China or Argentina, even though they may seem like valuable markets down the line.

How can you approach this? 

You can start by prioritising countries. You need to do this based on your current business interests and future expansion plans. The Madrid system allows flexibility to add countries later, so it is better to focus on key jurisdictions first.

Additionally, consider the cost-benefit analysis. Countries with individual fees might be more expensive. So, it is worth evaluating whether protection in these markets justifies the costs at this stage.

2. Timing your application for optimal brand protection

Timing is crucial when it comes to international trademark filings. For instance, if you are launching a new product or entering a foreign market, it is best to file your application ahead of time. You can file it before the product hits the shelves or your brand makes significant inroads into that country.

Trademark laws differ across countries, and some jurisdictions might grant first-to-file protection. What does this mean? It means that if someone else files first in the same class for a similar mark, you could lose rights to your brand in that country.

You can consider filing internationally as soon as you have a clear roadmap for your expansion. This ensures that you are legally protected before any public exposure or marketing efforts.

3. Choosing the right goods and services classes

As mentioned earlier, one of the most crucial steps is correctly identifying and classifying the goods and services associated with your trademark. However, strategic thinking should also guide this part of the process.

It might be tempting to file for a broad range of goods and services. After all, your brand might want to expand into several different product categories in the future. But keep in mind that the Madrid Protocol filing fee structure is based on the number of classes. More classes mean more costs.

How can you deal with this?

File for those goods and services that are central to your current and near-future operations. For example, if your business is primarily in fashion, focus on Class 25 (clothing, footwear, headgear) first. If your brand later diversifies into home décor, you can file a subsequent designation for that class.

This focused approach also increases the chances of your application being processed quickly and reduces the likelihood of objections for overreaching.

4. Managing brand consistency across multiple jurisdictions

So, when you operate internationally, consistency across all jurisdictions is key. Even though you may file your trademark under the same name, logo, or slogan in different countries, each country may interpret the protection differently.

For example, while the European Union may protect your mark across all its member states, the United States will consider each state separately in terms of enforcement and disputes. Additionally, national offices might object based on prior rights or local language issues.

You need to approach this by always conducting thorough pre-filing trademark searches to ensure your mark is available in each designated country. Consider local legal advice for certain markets, especially if they involve complex trademark rules or language issues.

5. Balancing cost and scope of protection

Yes, the Madrid Protocol makes it easier to manage multiple filings under one umbrella. But it is important to balance the scope of protection with the costs involved. As your brand grows, you may need to weigh the cost of maintaining a broad trademark portfolio versus the risk of leaving gaps in protection in specific jurisdictions.

A broader protection may seem ideal, but it might be unnecessary if you have no intention of expanding to certain markets in the short-to-medium term.

Start with a manageable portfolio. Monitor your international trademark’s performance in key regions, and as your business grows, expand your protection incrementally. The Madrid system allows you to modify and add new countries over time, so you can adjust as your business evolves.

6. Enforcing your rights internationally

Finally, you must consider how you will enforce your rights across various jurisdictions. While the Madrid Protocol gives you a simplified filing process, it does not extend to the enforcement of your trademark rights in foreign countries.

If you encounter infringements in specific markets, you will need to enforce your rights directly within those jurisdictions. You may need to work with local legal representatives, as enforcement mechanisms vary significantly between countries.

How to approach it?

Plan ahead for enforcement by researching local laws in key markets. Consider partnering with IP experts in the regions where you foresee the highest risk of infringement.

Conclusion and final thoughts

Navigating the process of filing an international trademark via the Madrid Protocol can seem a little scary in the beginning. But once you understand the steps and consider the strategic aspects, it becomes manageable. And moreover, it is a highly beneficial tool for businesses seeking to protect their brands globally.

What have we seen throughout the guide? We saw that the Madrid Protocol offers efficiency, flexibility, and cost-effectiveness for businesses wishing to expand their trademark protection into multiple countries with a single application. Yet, it is important to remember that successful international trademark management requires more than just completing the application.

The key is to approach the entire process with careful thought and a strategic mindset. From prioritising your key markets and selecting the right goods and services classes to staying proactive in monitoring your registration and responding promptly to provisional refusals, each step contributes to the long-term strength and security of your brand.

The Madrid Protocol is an invaluable tool for expanding your brand’s reach, but its true power lies in how you leverage it. By staying informed, planning ahead, and remaining vigilant, you can ensure that your intellectual property is well-protected as your business grows internationally.

Remember, the process may seem complex at times, but with the right preparation and ongoing attention, securing and maintaining global trademark protection through the Madrid Protocol can become one of your business’s most important assets. So, take the first step confidently, knowing that you are setting your brand up for success in the global marketplace.

FAQs 

1. What happens if my Indian trademark application is still pending when I file the international application?

You can file an international application based on a pending Indian trademark application, as the Madrid Protocol allows the basic mark to be either a registered trademark or a pending application. However, if the Indian application is refused or withdrawn during the five-year dependency period, the international registration may be cancelled (a “central attack”). To mitigate this, ensure your Indian application is robust and free of errors before filing internationally. If a central attack occurs, you can transform the international registration into national applications in designated countries within three months to preserve your rights.

2. Can I file an international application if my Indian trademark is under opposition?

Yes, you can file an international application even if your Indian trademark application is under opposition, as long as it is still active (not refused or withdrawn). However, if the opposition leads to the refusal of the Indian mark within the five-year dependency period, the international registration could be jeopardised. It’s advisable to resolve or strengthen your position in the opposition proceedings before filing internationally to minimise risks.

3. How does the Madrid Protocol handle trademarks with non-Latin scripts, such as Hindi or Tamil, for Indian applicants?

If your Indian trademark includes non-Latin scripts (e.g., Devanagari for Hindi or Tamil script), you can include it in the international application, but you must provide a transliteration and/or translation into Latin characters (English, French, or Spanish) as required by WIPO. Some designated countries may require additional translations or have specific requirements for non-Latin scripts, which could lead to objections. Conduct a pre-filing check in key markets to ensure the script is acceptable and not descriptive or confusing in those jurisdictions.

4. Can I file an international application for a trademark that is only used in India but not yet registered?

Yes, the Madrid Protocol does not require the basic mark to be in use in India; it only requires a pending application or registration with the Indian Trademark Office. However, some designated countries (e.g., the United States) have strict use-based requirements and may require proof of intent to use or actual use of the mark before granting protection. Plan ahead for such jurisdictions by preparing evidence of use or a declaration of intent to use.

5. What are the implications of designating a regional IP office, like the EUIPO, versus individual countries?

Designating a regional office like the European Union Intellectual Property Office (EUIPO) covers all EU member states with a single designation, which can be cost-effective and simplify management. However, a refusal by the EUIPO (e.g., due to a conflict in one member state) affects protection across the entire EU. In contrast, designating individual countries allows you to address refusals on a per-country basis, but it increases costs and administrative complexity. Strategically choose between regional and individual designations based on your target markets and budget.

6. How does the Madrid Protocol handle priority claims for Indian applicants?

You can claim priority in your international application if the Indian basic application was filed within the last six months, as per the Paris Convention. This gives your international application the same filing date as the Indian application in designated countries, which can help overcome later-filed conflicting marks. To claim priority, include the priority details in Form MM2 (E), and ensure the Indian filing date is accurately recorded. This is particularly useful in first-to-file jurisdictions like China or Japan.

7. What are the risks of designating too few countries initially to save costs?

Designating fewer countries initially can reduce upfront costs, but it risks losing priority in markets you may enter later. In first-to-file jurisdictions, a third party could register a similar mark before you file a subsequent designation, potentially blocking your brand. To mitigate this, conduct a trademark availability search in potential future markets and consider designating key markets early, even if you’re not yet active there, to secure priority.

8. Can I license my international trademark to a third party in designated countries?

Yes, you can license your international trademark in designated countries, but the process is managed at the national level, not through WIPO. You must record the license agreement with each national IP office where the trademark is protected, following their specific requirements. WIPO can record a license for the international registration (using Form MM13), but this does not automatically apply to all designated countries. Consult local IP attorneys to ensure compliance with national laws.

9. What are the implications of Brexit for UK trademark protection under the Madrid Protocol?

Since Brexit, the United Kingdom is no longer covered by an EU designation under the Madrid Protocol. You must separately designate the UK to obtain protection there. Existing international registrations that included the EU before January 1, 2021, were automatically cloned into separate UK registrations by the UK Intellectual Property Office (UKIPO), with no additional cost. For new filings, include the UK as a distinct designation and account for its individual fees (approximately CHF 250–300 per class, subject to verification).

10. How does the Madrid Protocol address trademark dilution in designated countries?

The Madrid Protocol itself does not address trademark dilution (the weakening of a famous mark’s distinctiveness). Dilution claims depend on the national laws of each designated country. For example, in the United States, famous marks can claim protection against dilution under the Lanham Act, but you must prove fame and likelihood of dilution. In India, dilution is recognised for well-known marks under section 29(4) of the Trade Marks Act. When filing, ensure your mark is strong and distinctive to maximise protection against dilution in jurisdictions that recognise it, and consult local counsel for enforcement.