If you are reading this, a provisional refusal has arrived from WIPO on an India designation and you need to know two things quickly: how long you have, and who can file the response.
The short answers are that the period is tight and runs from your receipt rather than from the Registry’s issuance, and that under section 145 of the Trade Marks Act only a registered Indian agent or advocate can act. Everything else follows from those two.
Quick reference
| Issued by | The Indian Trade Marks Registry, transmitted through WIPO |
| Refusal window | India declared 18 months under Article 5(2)(b) |
| Response period | One month from the holder’s receipt of the WIPO-transmitted notification |
| Runs from | The WIPO communication date, not the date the Registry issued it |
| Extension | Possible if sought before expiry, at the Registrar’s discretion |
| Who may file | A registered Indian trade marks agent or advocate — section 145 |
| Authorisation | Form TM-48 |
| Address for service | Required in India |
| If no response | The refusal is confirmed and the designation is lost in India |
| After the response | A hearing may follow if the written response does not satisfy the examiner |
The deadline, and the thing to check first
Read the notice. The period stated on the notification you received is what governs, and it is the document to diarise from.
The response period is one month from the holder’s receipt of the WIPO-transmitted notification. You will find other figures online — thirty days, or three months — but three months is generic Madrid commentary, not Indian practice. Work to one month.
Two practical points that catch foreign firms out.
The clock runs from your receipt, not from the Registry’s date. A refusal issued in Delhi some weeks before it reaches you does not give you those weeks back. Keep proof of the date you received the WIPO communication — if an extension is ever argued about, that date is the whole of the argument.
One month is short for a cross-border instruction. Identifying the mark, getting the client’s decision, settling a budget, executing a power of attorney and getting Indian counsel briefed will consume most of it if the file sits for a week first.
An extension can be requested, but only before the period expires, and it is discretionary. It is not a planning assumption.
Who may file the response
Section 145 of the Trade Marks Act restricts who may act before the Registry. A foreign holder cannot file the response itself and neither can its foreign attorney — the response must come from a registered Indian trade marks agent or an advocate, acting on a Form TM-48 authorisation, with an address for service in India.
Affidavits are the exception: evidence of use can be sworn by the holder or an officer of it, and filed by the Indian agent.
This is why the instruction has to go out early. The TM-48 has to be executed by the holder, which means getting it to the right signatory in the right company, and that step is usually the one that eats the month.
The grounds that recur
Cited earlier marks. The most common refusal by a distance. The response analyses the cited marks on their dates, their goods and services, and visual, phonetic and conceptual similarity, supported by Indian authority. Where the cited mark is vulnerable — unused, lapsed, or narrower than it looks — that is assessed at the same time.
Descriptiveness and lack of distinctiveness. Section 9 objections, answered on the mark itself or with evidence that it has acquired distinctiveness.
The registered symbol. India objects where an international registration carries ® on a mark not registered in India. Neither the Registry nor WIPO will strip the symbol from the IR. The practical answer is to renounce the India designation and refile nationally without it — which is why this is worth catching before designation rather than after.
Priority defects. India is rigid here. It accepts a single priority claim only, and does not accept partial priority — the goods must match the basic application. The fix is to elect one date, delete the extra goods, or drop the claim.
One class refusing the whole application. An objection in a single class refuses the designation entirely rather than just that class. Where one class is the problem and the rest are clean, deleting the problem class from the IR and filing it nationally lets the remainder proceed.
The use problem, and why it matters here
India is a use-based system. Rights flow from prior use, and in opposition the burden sits on the applicant.
But a Madrid designation of India cannot declare use — it is automatically treated as proposed to be used. A holder with ten years of Indian trade gets no credit for it on the face of the designation.
The provisional refusal response is where that is corrected. Detailed affidavits of use — invoices, distribution, advertising, media coverage, website analytics directed at India — carry real weight, and this is the stage at which to file them rather than holding them for a hearing that may not come.
See the Madrid Protocol and India for the designation-stage traps, and Madrid Protocol and India for the procedure overall.
The written response is usually your only shot
A hearing follows only where the written response has not satisfied the examiner, and it is not a second attempt — it is an opportunity to address what was left unanswered.
So the initial response carries the case: argument on each ground raised, a comparison against every cited mark, the evidence of Indian use with affidavits, and the Indian authority that supports it. A short holding response filed to stop the clock, with substance to follow, is not how the Indian Registry works.
If nobody appears at a listed hearing, the application is abandoned.
What we need from you to act
For an instruction to be actionable on the day it arrives:
- the international registration number and the India designation details;
- the WIPO notification, and the date you received it;
- an executed Form TM-48 — we can send the form for signature the same day;
- the holder’s full name and address as recorded in the IR;
- whether the mark is in use in India, and if so who holds the evidence; and
- any related Indian national filings by the same holder.
Where use evidence exists, tell us early even if it is not yet assembled. It changes how the response is built, and it takes longer to gather than anything else on the list.
After the response
The Registry may accept, accept subject to conditions or a disclaimer, list a hearing, or confirm the refusal. Acceptance is followed by publication and the ordinary opposition period.
Two further points worth knowing.
Deemed protection. Under section 36E(5), where the Registry fails to notify the International Bureau within the 18 months and the opposition period has passed without opposition, the mark is deemed protected. India’s trigger is a failure to convey acceptance, which is not the same as the Protocol’s tacit-acceptance mechanism, and the Delhi High Court addressed the distinction in Allergan v. Controller General.
Amendments go to WIPO, not to us. Changes of name or address, limitations of the specification and renewals are recorded at the International Bureau. The exception is a withdrawal of a priority claim, which can be filed directly with the Indian Registry — useful when a defective priority claim is the objection.
Frequently asked questions
How long do I have to respond to an Indian provisional refusal? Indian practice is one month from the holder’s receipt of the WIPO-transmitted notification. The notice you received governs, so diarise from it and keep proof of the receipt date.
Can I file the response myself as the holder’s foreign attorney? No. Section 145 of the Trade Marks Act restricts practice before the Registry to registered Indian agents and advocates. A Form TM-48 authorisation and an Indian address for service are required.
Can the deadline be extended? An extension may be requested before the period expires, at the Registrar’s discretion. It cannot be assumed, and it cannot be sought after expiry.
My client has used the mark in India for years. Does that help? Not automatically — a Madrid designation is treated as proposed to be used. Evidence of use is filed with the response, by affidavit, and it carries real weight in India.
The IR shows the ® symbol and India has objected. What now? Neither the Registry nor WIPO will remove it from the IR. The usual route is to renounce the India designation and refile nationally without the symbol.
What happens if we miss the deadline? The refusal stands and the designation is lost in India. The mark can be filed nationally afterwards, but with a new date and no priority.
Useful official resources
- Indian Trade Marks Registry — forms and the Madrid guidance
- WIPO Madrid System
- Trade Marks Act, 1999 — sections 36E, 145
- Trade Marks Rules, 2017
See our related notes on the Madrid Protocol and India, trademark examination and marks that cannot be registered.
Holding a provisional refusal with the clock running? Talk to us — we act for foreign firms on India designations and can have a TM-48 with you the same day.