Designating India through the Madrid Protocol is efficient — one application, one language, one set of fees, and India has been a member since 8 July 2013. It is also the route that generates the most avoidable trouble, because India examines an international registration under its own law, and that law was built around use and around national filings.
This note collects everything that goes wrong, and what to do about each of it.
The use handicap, and why it matters more than it looks
India is a common-law jurisdiction. Rights follow prior use, not the filing date. Yet a Madrid designation of India is automatically treated as “proposed to be used” — there is no field in which to state when the mark was first used in India, and no way to elect a use basis. India reserved the right under Rule 7(2) of the Common Regulations to require a declaration of intention to use, and the practical result is that every designation arrives with the weakest possible use position.
The consequence shows up in opposition, not examination. If you filed nationally and claimed use, the opponent has to prove non-use. If you came through Madrid, the burden of proving your use in India sits on you.
That is the single strongest argument for filing nationally where you actually trade in India. Indian courts read “use in India” broadly — Indian users reaching a website carrying the mark, trans-border reputation, advertisements in international publications circulating in India — but you still have to prove it, and proving it is harder than having claimed it at filing.
You can still put use evidence in. It goes in with the response to the provisional refusal, as affidavits with invoices, analytics, publications and media. Front-load it.
The provisional refusal: what the clock actually is
India declared the 18-month window under Article 5(2)(b), so the Registry has that long to raise objections. When it does, it issues a provisional refusal through WIPO.
The response period is one month from the date the holder actually receives the notification from the International Bureau — not from the date the Registry issued it, and not from the date WIPO recorded it. The difference is often a few weeks, and those weeks matter.
Because the clock runs from receipt, keep proof of the receipt date: the postal receipt, or the email delivery date. If the application is later treated as abandoned on a disputed date, that proof is the whole argument.
An extension can be sought, but only by applying before the month expires, and it is at the Registrar’s discretion. One is realistic. Planning for more is not.
Multiple provisional refusals on the same designation are common. Each carries its own deadline, and missing any of them abandons the application.
One more structural point: for Madrid designations the Registry frequently decides on the written response alone, without calling a hearing. There may not be a second chance, so the first response has to carry the full argument, the comparison against each cited mark, the case law, and the evidence.
Who can file the response
Under section 145 of the Trade Marks Act, acts before the Registrar must be done through a registered Indian trademark agent or an advocate. A foreign holder cannot respond directly, and neither can its home counsel. The narrow exception is affidavits, which the holder’s own officers execute.
Indian counsel also needs an executed Form TM-48 — the authorisation — signed by the holder. Getting that to the right signatory inside a corporate group is routinely what consumes the month, so start it the day the refusal arrives rather than the day the strategy is settled.
The recurring grounds
Cited earlier marks. The most common ground by far. Work through the cited marks’ filing dates, claimed use dates and specifications; several will turn out to be later than the holder’s own adoption. Then argue visual, phonetic and conceptual dissimilarity on the Indian authorities.
The ® symbol. This one deserves its own warning, because it has no clean cure.
India permits ® only on a registered mark — section 107 makes it an offence to represent a mark as registered when it is not. If the mark as filed in the international registration contains ®, India objects.
What makes it a trap rather than an objection is that nobody can remove the symbol. We have run this to its end: the basic registration was from a country that permits ® in a mark, so it had never been a problem at home; the applicant had gone further and disclaimed the ® in the international application. India objected anyway and directed that it be removed through WIPO. WIPO replied that it has no power to amend, because the Protocol and Common Regulations provide no correction where the error is the holder’s own — Form MM21 does not reach it — and pointed out that the disclaimer had already been communicated to India. The Indian office, taken up to the Controller, offered one answer: file a fresh application.
There is an argument that section 107’s own exception covers this, since it permits ® used in direct association with words referring to registration in another jurisdiction, and an international registration designating India is arguably exactly that. Practice is not consistent either — marks carrying ® do get through. But it would take a court to settle it, and in the meantime the cure is renunciation of the India designation and a national refiling without the symbol.
The prevention is one line long: do not include ® in the mark in an international application that will designate India.
Priority claims. India takes a strict single-priority approach. Multiple priority dates across a specification are not accepted, and partial priority — where the international application’s goods are broader than the basic application’s — is not accepted either. Either elect one date and bring the goods into line, or delete the claim. Deleted goods can go into a national filing.
Class-specific objections. India examines the designation as a whole, so an objection in one class refuses the entire application. Where one class is the problem and the rest are clean, the usual fix is to delete that class from the international registration and refile it nationally, letting the remainder proceed.
Amendments: WIPO, the Registry, and the gap between them
Changes to the international registration go to WIPO’s International Bureau, not to the Indian Registry. That covers limitations and deletions of goods and services, classification corrections, changes of name, address or ownership, deletion of a priority claim, and renewals. A withdrawal of a priority claim can in practice also be filed directly with the Indian Registry.
The difficulty is the category in between: a correction that only concerns the Indian designation and that an Indian examiner has asked for. The Registry generally will not accept the filing; WIPO records changes to the international registration, not answers to one office’s objection. The ® case above is the standard illustration — a trivial change, relevant only to India, with no route.
Where this happens, raise it with the Registry in writing and keep the correspondence. A documented attempt to comply is what supports restoration later if the application is treated as abandoned for a failure the applicant had no means to cure. The Registry’s electronic filing has expanded considerably, so check the current position before assuming a route does not exist.
Deemed protection
Under section 36E(5), if 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, which turns on failure to convey refusal. The Delhi High Court worked through the difference in Allergan v. Controller General. We cover it separately in deemed protection under the Act vs the Protocol.
Dependency and transformation
For five years the international registration depends on the basic mark. If the basic application or registration is refused, withdrawn, cancelled or cut back within that period, the international registration falls to the same extent in every designated country — central attack. Delete a term from the basic specification and it disappears from the designations too.
Transformation into a national Indian application is available to salvage the position, but it is expensive and rarely straightforward. Where the basic mark is under opposition or otherwise exposed, a parallel national filing in India is the cheaper insurance.
Madrid or national
File nationally in India where the mark is already used in India and you want that use on the record; where the mark carries ®; where the goods have expanded beyond the basic application; where the basic mark is at risk; or where speed matters.
Use Madrid where India is one of many designations, the mark is new to the market, and central management across a large portfolio is the point.
Frequently asked questions
How long do I have to respond to an Indian provisional refusal? One month from the date you actually receive the notification from WIPO, not from the date it was issued. An extension can be sought before expiry, at the Registrar’s discretion.
Can a Madrid application claim use in India? No. It is automatically treated as “proposed to be used.” File affidavits of use with the response to the provisional refusal instead.
Can a foreign holder respond to the Indian objection directly? No. Section 145 requires a registered Indian trademark agent or advocate, with Form TM-48 executed by the holder. Affidavits are the exception.
Can the ® symbol be removed from an international registration? No. WIPO has no power to amend a holder’s own error of this kind, and a disclaimer has not saved the designation in practice. The cure is renunciation and a national refiling without the symbol.
Where do I file amendments to a Madrid mark designating India? With WIPO’s International Bureau. The exception is a withdrawal of a priority claim, which can go directly to the Indian Registry. Corrections specific to the Indian designation have no clear route, so document the attempt.
Why does an objection in one class refuse the whole application? Because India examines the designation as a whole. Deleting the problem class from the international registration and refiling it nationally lets the rest proceed.
Useful official resources
- The Trade Marks Act, 1999 — sections 36E, 107 and 145
- WIPO — Madrid System
- Trade Marks Registry — IP India
For the detail behind particular sections, see our notes on the response deadline and proof of receipt, overcoming the Trademark Office’s objections, the ® trap, the amendment gap and the problem of use.
See also deemed protection under the Act vs the Protocol, multiple and partial priority claims and filing internationally from India, plus our guides to the Madrid Protocol and India and responding to a provisional refusal.