Filing an international trademark with India as your origin country? The Madrid System’s single filing and central management are attractive — but a five-year dependency, series-mark limits, and India’s Registry backlog mean it isn’t always the cost-saver it looks.
Note: The Madrid System has grown to over 110 members covering 130+ countries (this piece cited 92). Check WIPO for the current list before designating.
How it works
The Madrid Protocol lets you file across the world through WIPO. Once you file in your home (origin) country, you can designate other member countries using the origin registration’s priority date. Applying in the origin country gives you the option to reach the other members — and registered marks can be designated too.
Advantages: a single renewal date; recordals (assignments, mergers, amendments) handled through the International Bureau; and lower official filing fees — cost-effective in principle.
Two scenarios arise: India as the designated country, or India as the origin country (an Indian-origin mark).
Subsequent designation
The system’s highlight: after filing (or even after registration), you can designate another country using the origin details — called subsequent designation.
- India can be designated only where the mark was filed after India joined the Protocol (8 July 2013) — so a pre-2013 Madrid application can’t designate India.
- But Indian-origin marks can designate other members even if the Indian application/registration predates 8 July 2013.
The five-year dependency — central attack
A crucial point: the international registration is dependent on the origin mark for five years. If, in that window, the origin mark is cancelled, opposed or objected and not overcome, all designations routed through it lose protection — the central attack. Office actions at the origin office thus affect the whole Madrid application.
Series marks
A series mark covers several similar-but-distinct marks (e.g. Samsung’s Galaxy Note, Galaxy Grand, Galaxy Duos). In India, you can’t protect series marks under one designation — each mark needs a separate application, which is cumbersome and not cost-effective.
The India-origin caution
Because of Registry backlogs, Indian registration is slow and often meets objections/oppositions. That works against India-origin applicants: the high likelihood of the mark being opposed, objected or stalled — during or even after the five-year dependency — puts every routed designation at risk. Applicants should weigh the Registry’s timeline and the monetary losses (multiple designations, foreign counsel) — which may exceed the cost of filing separately in each country.
The takeaways
- Single filing, single renewal, central management — the Madrid draw.
- Central attack is the risk — five years’ dependency on the origin mark.
- Series marks need separate designations in India — no bundling.
- India-origin filings carry backlog risk — weigh Madrid against direct national filings.
Frequently asked questions
Can I use India as the origin country under the Madrid Protocol? Yes — an Indian application or registration can be the basis for designating other member countries, even if the Indian mark predates 8 July 2013.
What is central attack? During the five-year dependency period, if the origin mark is cancelled, opposed or objected and not overcome, all designations routed through it lose protection.
Can series marks be protected under one Madrid designation in India? No — in India each mark in a series needs a separate application, making it cumbersome and less cost-effective.
Is Madrid always cheaper than filing separately? Not necessarily — for India-origin filings, Registry backlogs and central-attack risk (plus foreign counsel costs on objections) can make separate national filings more sensible.
Useful official resources
- WIPO — Madrid System
- The Trade Marks Act, 1999