Eligibility and Procedure for appliying for Internation Trademark Registration under

Madrid System in India

The Madrid Protocol provides for the International Trademark Registration. The Registration
can be done by just making one application in which more than one country can be covered.
The prospect of filing only a single Registration application to cover a wide range of
countries gives advantages, in terms of both portfolio administration and cost savings, as
opposed to a portfolio of several independent National Registrations.

Certain amendments were made in the Indian Trademarks Law to comply with the Madrid
System, after India became a member of the system of Madrid Protocol. On 21 st September,
2010, the Trademarks (Amendment) Act, 2010, was passed to bring into force the Madrid
Protocol system in India. The amendment in the Trademarks Act led to the addition
of Chapter IVA comprising of Section 36A to Section 36G in the Trademarks Act,
1999. Chapter IVA of Trademarks Act, 1999[1], explicitly focused on the “Special Provisions”
relating to Trademarks Protection through International Registration of marks under the
Madrid Protocol in India.

The Madrid Protocol permits the Trademarks Registration in several jurisdictions

universally that are part of Madrid Union’s member countries. The Registration can be done
by filing a single application in the national trademark office or regional trademark office of
the applicant. The introduction of the Madrid Protocol in India helped in the easement of the
procedure for applying for Trademark Registration and also made easy the subsequent
management related to the Trademark Registration. By providing a ‘basic application’ or
‘basic Registration’ in any member country of Madrid Protocol, now any person can
designate India and get International Registration or Trademark protection in India.     

Essential Requirements1
The International Registration of Trademark applications can be filed in India under the
Madrid Protocol. The International application can only be filed in India when India is either
the country of origin or the designated country in the application. In case India is the country
of origin, the Trademarks Registry of India (TMR) will receive the International applications
from applicant for International Registrations of Trademark in India. On the other hand, in
case India being the designated country in the International Registration application,
the International Trademark Registration application should be filed with World
Intellectual Property Organisation (WIPO), selecting the country India as the
designated country.

In case of Indian Applicants, the appropriate office will be the place under whose
jurisdiction the Applicant’s principal place of business falls. In case of Foreign
Applicant, Applicant’s appropriate office will be the place within whose jurisdiction the
Applicant’s agent/attorney is based.2

1
https://corpbiz.io/learning/madrid-protocol-in-
india/#What_are_the_essential_requirements_for_filing_an_International_Trademark_Application_under_the
_Madrid_Protocol_in_India
2
https://ssrana.in/ip-laws/trademarks/trademark-application-filing-in-india/
Stages of Application3

Stage I: Filing of Application for International Registration

For filing an International Registration application under Madrid Protocol, the presence of a
formerly filed or registered Trademark with the relevant regional Trademark Office of
India is needed. After receiving an International Registration application, the domestic
Indian Trademark Office will verify the contents of the international application with the help
of the formerly filed or registered application of the Trademark specified in the new
international application.

Once getting satisfied with the suitability and perfectness of the specified Trademark for
Indian and International Registrations under Madrid Protocol, the Trademark Office of India
should forward the International Registration application to the International Bureau (IB) of
World Intellectual Property Organisation (WIPO) located in Geneva, for further processing of
the application.

Stage II: Examination and Approval of Application by WIPO

After receiving the International Registration application from the Trademark Office of India,
the International Bureau (IB) of World Intellectual Property Organisation (WIPO) will
examine the essential requirements and appropriateness for the International Registration of
the application for International Registration. In the case of the perfectness and
appropriateness of the international application, the International Bureau (IB) will record the
application in the International Register. Once the application is recorded in the International
Register, the application will be published in the World Intellectual Property Organisation
(WIPO) Gazette of International Trademarks. At the time of publishing of the international
application in the gazette, a notification regarding the international application should be sent
to the targeted contracting countries by the applicant of the application.

In case of any flaws or irregularities in the international application, the applicant of the
international registration application will be promptly informed about such flaws or
regularities. A period of 3 months is given to the applicant for satisfying the International
Bureau (IB) with his/her remedies. The targeted countries in the application are requested to a
critical and thorough examination of the international Registration application as per the
Trademark Rules and regulations of the targeted countries. The targeted countries should
submit their examination report to the International Bureau (IB) of the World Intellectual
Property Organisation (WIPO) within 12 to 18 months.

Stage III: Examination and Approval of the Trademark Office of each Designated Country

In the third stage, the International registration application will pass through critical and
substantive examination at the Trademark Offices of each designated country in the
application, as if the international application was filed directly with the appropriate office for
International Registration. After examination, the designated countries in the application will
then notify the respective acceptance or refusal of the application to the World Intellectual
Property Organisation (WIPO). The acceptance or refusal of the application should be
notified to the World Intellectual Property Organisation (WIPO) within the prescribed time
period of 12 to 18 months.
3
https://cleartax.in/s/trademark-registration-foreigners-in-india
In case all the designated countries accepted the application, then the application will be
registered under the Madrid Protocol for a period of 10 years. After the acceptance, a
statement of the grant will be issued to the applicant. On the contrary, in case the application
is refused by the designated country, the subsequent procedures related to refusal of
application will be conducted directly between the applicant and the concerned member
country of Madrid Protocol. The refusal procedures included responses, appeal, hearing,
prosecution. In the whole refusal procedures, the involvement of the World Intellectual
Property Organisation (WIPO) should not be there.

The documents required for filing International Registration under Madrid Protocol in
India

 The application of the International Trademark registration should be attached with an

application form;
 In case the applicant is not owner itself of the Trademark, then a Power of Attorney in
favor of the person who is an applicant of International Registration application should be
attached with the International application;
 The amount of handling fees should be paid with the International application;
 The International Designation fee should be paid with the International application. The
designated fees should be paid in Swiss Francs and is payable to the World Intellectual
Property Organisation (WIPO).