The Madrid system, administered by the World Intellectual Property Organization, lets you seek trademark protection in multiple countries through a single international application.
India acceded with effect from 8 July 2013. You can designate India in an international application, and you can file an international application through the Indian trademark office as office of origin.
The appeal is obvious: one application, one set of fees, protection across a large number of member countries. The reality in India involves a few structural features that catch foreign applicants out, which are covered below.
The process
Basic application or registration
A pending application or registration with the Indian trademark office is a prerequisite for filing an international application through India.
The international application must correspond to that basic application. The Indian trademark office certifies that the details, including the mark, goods and services and any colour claim, match the basic application or registration, records the date the international application was filed, and forwards it to WIPO.
Formal examination by WIPO
WIPO examines the application for compliance with formal requirements. Where irregularities are found they are notified to the applicant and must be remedied within three months, failing which the application is treated as abandoned.
Publication and notification
If there are no irregularities, or they have been cured in time, the application is recorded in the International Register and published in the WIPO Gazette of International Marks.
WIPO issues a certificate of international registration and notifies the trademark offices of the designated countries.
Substantive examination in the designated country
This is the part applicants underestimate.
The application is examined by each designated country’s office exactly as a directly filed national application would be. The Madrid system handles the filing. It does not change the substantive law applied in India.
Acceptance or refusal is notified to WIPO within the applicable time limit, either 12 or 18 months depending on the country. WIPO records it and notifies the applicant.
The Indian timeline
Once an international registration designating India is notified to the Indian trademark office, the office has 18 months to issue a provisional refusal.
If no provisional refusal issues within that window, protection is generally secured. If one does issue, it must be answered in India, under Indian law, within the Indian deadline.
Where foreign applicants run into trouble
The response deadline is Indian, not WIPO’s
A provisional refusal must be responded to within the period set by Indian practice. Counting from WIPO’s notification, or assuming the international framework provides extra time, is a recurring and expensive error.
You need an Indian address for service
Responding to a provisional refusal requires an Indian agent. Applicants who have not appointed one before the refusal issues lose part of an already short window arranging it.
Specifications drafted for other offices draw objections
A specification accepted at EUIPO or USPTO will not necessarily be accepted in India. This is precisely why we recommend the TMClass tool, which includes the Indian trademark office and flags goods or services that may not be acceptable here.
Getting the specification right in the international application is far easier than amending it after a provisional refusal.
Opposition still applies
Clearing examination is not the end. The mark is advertised, and the four-month opposition window applies as it would to a national application.
Central attack
For the first five years, the international registration depends on the basic application or registration. If the basic mark falls away in that period, the international registration falls with it, across every designated country.
Where India is the office of origin, the strength of your Indian basic application matters well beyond India.
Filing through India as office of origin
Indian applicants can file an international application through the Indian trademark office, provided there is a qualifying Indian basic application or registration.
The Indian office certifies and forwards the application to WIPO. From there the process runs as described above, with each designated office examining under its own law.
Frequently asked questions
How long does the Indian trademark office have to refuse an international registration? Eighteen months from notification. If no provisional refusal issues in that period, protection is generally secured.
Do I need an Indian agent for a Madrid designation? Not to designate India. You do need one to respond to a provisional refusal or defend an opposition, so appointing an agent early avoids losing time when a refusal arrives.
Is Madrid cheaper than filing directly in India? Across several countries, usually yes. For India alone it is not obviously cheaper, and a direct filing gives you local representation from the outset.
What happens if my basic application is refused? Within the first five years, the international registration depends on the basic mark. If the basic mark falls, the international registration falls with it, though transformation into national applications is possible at additional cost.
Can I add classes to an international registration later? No. Additional classes require a fresh application. You can, however, designate additional countries subsequently.
Does a provisional refusal mean my mark is rejected? No. It is an objection, equivalent to an examination report in a national filing, and it is answerable. What it does mean is that the clock is running.
Useful official resources
- WIPO Madrid Monitor — track international registrations and their status in India
- WIPO Madrid system — fees, forms and member list
- IP India public search
- TMClass — check whether your specification will be accepted in India
We act as Indian counsel on Madrid designations and provisional refusals for firms across the world. Talk to us if you need Indian representation.