A Madrid Protocol application designating India comes with a hidden catch: it’s filed on a “proposed to be used” basis, so you can’t claim actual use. In common-law India — where prior use trumps first-to-file — that quietly shifts the burden against you.
The setup
Since India joined the Madrid Protocol on 8 July 2013, thousands of applications have designated India, while relatively few have originated here. There’s endless debate on the best route for international brands — but one issue deserves attention: the claim of use of your mark in India.
Madrid applications and the ‘use’ gap
The Indian Trade Marks Office has been objecting to many Madrid-designated applications (using the 18-month provisional-refusal window fully), mostly citing similar existing marks on the register. Review the cited marks, though, and several were filed or claim use from dates much later than when the applicant began using the mark globally or in India.
The major disadvantage: a Madrid application designating India is automatically on a “proposed to be used” basis — with no way to claim usage. Enquiries with the Registry confirm there’s no provision for the applicant to state when the mark was used in India, or to elect a “proposed to be used” basis — despite India having reserved (under Rule 7(2) of the Common Regulations) the right to require a declaration of intention to use.
Why claiming use matters in India
India is a common-law country — protection rests on prior use, not first-to-file. Claiming use helps argue acquired distinctiveness and prior adoption/use in oppositions and against infringers. Indian courts take a broad view of “use in India”: Indian users accessing a website carrying the mark, trans-border reputation, even advertisements in international publications circulated in India can count.
The burden-of-proof twist
Although you can file usage evidence when responding to the examination report for a Madrid-designated application, a national application documenting the use claim upfront may serve better. The key difference in an opposition:
- Madrid application (no use claimed) — the burden of proving use in India falls on you, the applicant.
- National application (use claimed) — the burden of proving non-use falls on the opponent.
The takeaway
This doesn’t settle the broader Madrid-vs-national debate — but if your mark has been used in India, the inability to claim that use under Madrid is a real factor to weigh. A national filing that clearly documents use can put you in a stronger position in future disputes.
The takeaways
- Madrid-designated marks can’t claim use — they’re filed “proposed to be used.”
- Use is powerful in common-law India — for acquired distinctiveness and prior-use arguments.
- The burden shifts — Madrid puts proving use on you; a national filing puts proving non-use on the opponent.
- Consider a national filing where you have genuine Indian use to document.
Frequently asked questions
Can I claim use of my mark in a Madrid application designating India? No — such applications are automatically filed on a “proposed to be used” basis, with no provision to claim usage, though you can file use evidence when responding to the examination report.
Why does claiming use matter in India? India is a common-law country where prior use is decisive — claiming use helps argue acquired distinctiveness and prior adoption, and shifts the burden in oppositions.
How does the burden of proof differ? For a Madrid application (no use claimed), you must prove use; for a national application claiming use, the opponent must prove non-use.
When should I consider a national filing over Madrid? When your mark has genuine, documentable use in India, a national filing that records that use can strengthen your position in disputes.
Useful official resources
- WIPO — Madrid System
- The Trade Marks Act, 1999