How to File International Trademark Application (Madrid Protocol)

Indian businesses filed over 4,200 international trademark applications through the Madrid Protocol in 2024, a 28% increase from 2023, reflecting the growing global ambitions of Indian brands. The Madrid Protocol enables Indian trademark owners to seek protection in up to 132 countries through a single application filed with the Indian Trademark Registry. WIPO base fees start at 653 CHF (approximately Rs 60,000), and the complete process takes 12 to 18 months. This guide covers every step from securing your base mark to managing protection across multiple jurisdictions.

What is the Madrid Protocol?

The Madrid Protocol (formally the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks) is an international treaty administered by the World Intellectual Property Organization (WIPO) that provides a cost-effective and efficient way for trademark owners to secure protection in multiple countries through a single application. India became a member on July 8, 2013, under Section 36E of the Trade Marks Act, 1999 (as amended by the Trade Marks Amendment Act, 2010).

The system works through a hub-and-spoke model: the applicant files through their home country's trademark office (Office of Origin), which certifies and forwards the application to WIPO's International Bureau in Geneva. WIPO records the mark in the International Register and notifies each designated country, whose trademark offices then examine the application under their national law. This eliminates the need to file separate applications, hire local agents, and pay fees in multiple currencies for each country individually.

Madrid Protocol vs Direct National Filing

Before proceeding with the Madrid Protocol, understand how it compares with the alternative approach of filing separate trademark applications directly in each target country.

Prerequisites: Securing Your Base Mark in India

The Madrid Protocol requires a base mark in the applicant's home country as a mandatory prerequisite. For Indian applicants, this means having either a pending trademark application or a granted registration with the Indian Trademark Registry.

Requirements for the Base Mark

The international application must match the base Indian mark in three critical aspects: the mark itself (identical reproduction), the owner (same applicant name and legal entity), and the goods/services (same or narrower scope within the same Nice Classification classes). If you want to file for goods in Class 25 (clothing) internationally, your Indian mark must also cover Class 25. You cannot expand the scope of goods/services beyond what the base mark covers.

Pending Application vs Granted Registration

Unlike the older Madrid Agreement, the Protocol allows filing based on a pending Indian application (TM-A filed status). You do not need to wait for the Indian registration to be granted. However, using a pending application carries higher risk because if the Indian application is refused or withdrawn during the 5-year dependency period, the international registration is also cancelled. Using a granted registration as the base mark eliminates this specific risk during the central attack period.

Step-by-Step Madrid Protocol Filing Process

The international filing process involves 10 steps across three phases: Indian Registry filing (Steps 1 to 5), WIPO processing (Steps 6 to 7), and designated country examination (Steps 8 to 10). Total timeline: 12 to 18 months.

Step 1: Confirm Your Base Mark Details

Log in to the IP India portal at ipindia.gov.in and verify your Indian trademark's current status. Note down the application number, filing date, mark representation, owner details, and Nice Classification classes. If the mark has been registered, note the registration number and date. Any discrepancy between the base mark and the international application will cause the Indian Registry to reject the TM-M form. If your trademark details need updating (name change, address change), file the appropriate modification with the Indian Registry first.

Step 2: Select Target Countries Strategically

Choose designated countries based on business priority. Consider: current export markets, planned expansion territories, countries with high trademark squatting risk (China, particularly for consumer brands), and countries where your competitors operate. Key considerations for Indian businesses:

Step 3: Classify Goods and Services Accurately

Review your goods/services classification using the WIPO Nice Classification database (12th edition, 2025). The international application can use the same or narrower scope as the base mark. Each Nice Classification class attracts supplementary fees. Use the WIPO Goods and Services Manager tool at webaccess.wipo.int/mgs to verify acceptable terms for each designated country. Some countries reject broad descriptions that are acceptable in India, so check country-specific requirements before finalizing. The US, in particular, requires specific descriptions of goods/services rather than broad class headings.

Step 4: Complete Form TM-M

Form TM-M is the official application form prescribed under Rule 83 of the Trade Marks Rules, 2017. Complete the form online through the IP India portal or prepare it offline for physical submission. Key sections include: applicant information (must match the base mark owner exactly), mark representation (upload the same mark as the base mark in JPEG format, minimum 300 DPI), Nice Classification and goods/services list, designated contracting parties, priority claim details (if applicable), and authorization of agent. Pay the Indian Registry handling fee of Rs 10,000 at the time of filing.

Step 5: Indian Registry Certification (2 Months)

After receiving Form TM-M, the Indian Trademark Registry acts as the Office of Origin. The Registry examines the application to verify: the applicant is entitled to file through India (Indian national, resident, or has a real and effective commercial establishment in India), the mark matches the base mark exactly, and the goods/services do not exceed the base mark scope. Upon satisfaction, the Registrar certifies the application and forwards it electronically to the WIPO International Bureau. This certification process takes up to 2 months as mandated by the Madrid Protocol.

Step 6: WIPO International Bureau Processing (2 to 3 Months)

WIPO's International Bureau examines the application for compliance with formal requirements. WIPO does not examine the mark for registrability (that is each country's responsibility). WIPO checks: proper form completion, fee payment, classification accuracy, and compliance with the Madrid Protocol regulations. If deficiencies are found, WIPO issues an Irregularity Notice giving the applicant 3 months to correct the issues. Upon approval, WIPO records the mark in the International Register, assigns an International Registration Number (format: 1XXXXXX), and publishes the mark in the WIPO Gazette of International Marks.

Step 7: WIPO Notifies Designated Countries

After registration, WIPO sends notifications to the trademark office of each designated country. The notification includes the full application details, mark reproduction, goods/services list, and applicant information. Each country's examination period begins from the date of notification. WIPO also sends the applicant a certificate confirming the International Registration with the registration number, date, and list of designated countries. Track your application status on WIPO Madrid Monitor at wipo.int/madrid/monitor.

Step 8: National Examination in Each Designated Country

Each designated country examines the international registration under its own national trademark law, exactly as it would examine a direct national filing. Countries have either 12 months or 18 months (if they have made the extended refusal declaration) to issue a provisional refusal. If no refusal is issued within the deadline, the mark is deemed protected in that country. Most major countries (USA, EU, UK, Japan, Australia) use the 18-month period. China uses the 12-month period.

Step 9: Handle Provisional Refusals

If a designated country issues a provisional refusal, the notification comes through WIPO. You must appoint a local trademark attorney in that country to file a response. Common refusal grounds vary by country: the USA commonly refuses for likelihood of confusion or descriptiveness and requires a Declaration of Intent to Use, the EU may refuse for relative grounds if a prior similar mark exists, and China frequently refuses for similarity to existing registrations. Response deadlines range from 2 to 6 months depending on the country. Professional fees for responding range from $500 to $3,000 per country depending on the complexity.

Step 10: Grant of Protection and Ongoing Management

When examination is complete and no refusal exists (or a refusal has been overcome), the designated country issues a Statement of Grant of Protection (Rule 18ter). This confirmation means your mark has the same legal effect as a nationally registered trademark in that jurisdiction. You can now enforce your trademark rights, license the mark, and take action against infringers in each protected country. The international registration is valid for 10 years and can be renewed through a single renewal filing with WIPO.

Madrid Protocol Fee Structure (2025)

The Madrid Protocol fee system has three components: the WIPO basic fee, supplementary fees for additional classes, and individual designation fees charged by specific countries.

The Central Attack Risk and Mitigation

The most significant risk in the Madrid Protocol is the central attack provision, which links the international registration to the base Indian mark for the first 5 years.

What Triggers Central Attack?

If the Indian base mark is cancelled, withdrawn, refused, restricted, or expired within 5 years of the international registration date, the international registration is proportionally cancelled in all designated countries. Triggers include: successful opposition by a third party against the Indian mark, cancellation proceedings in India, failure to respond to an Indian office action, and lapse of the Indian registration due to non-renewal.

Mitigation Strategies

To protect against central attack: 1) Ensure the Indian mark is strong and likely to survive any challenges before filing internationally. 2) Resolve any pending oppositions against the Indian mark. 3) File based on a granted Indian registration rather than a pending application when possible. 4) If central attack occurs, use the transformation right to convert cancelled international designations into national applications in each country within 3 months, preserving the original filing date. 5) After the 5-year dependency period, the international registration becomes fully independent.

Post-Registration: Managing Your International Trademark

Monitoring and Enforcement

After obtaining protection, monitor your trademark across designated countries for potential infringement. Use WIPO's Global Brand Database and national trademark registries to search for conflicting marks. Set up Google Alerts for your brand name across target markets. If infringement is detected, enforce your rights through the local legal system of the country where the infringement occurs, using your Statement of Grant of Protection as evidence of registration.

Recording Changes with WIPO

Any changes to the trademark owner, name, or address must be recorded with WIPO to maintain accurate records. Use Form MM5 for ownership changes (177 CHF), Form MM9 for name/address changes (150 CHF), and Form MM7 for restricting the list of goods/services (177 CHF). WIPO notifies all designated countries of recorded changes. Failing to record changes can create enforcement complications.

Renewal Process

International registrations must be renewed every 10 years. WIPO sends a reminder 6 months before the expiry date. File the renewal through WIPO's online portal. You can choose to renew in all or selected designated countries. A 6-month grace period with a 50% surcharge is available after the expiry date. If renewal is missed beyond the grace period, the registration is cancelled and cannot be reinstated.

Common Mistakes in Madrid Protocol Filing

1. Mismatch Between Base Mark and International Application

The most common error is filing an international application that does not exactly match the Indian base mark. Any discrepancy in the mark representation, owner name, or goods/services scope will cause rejection by the Indian Registry. Double-check every detail before filing Form TM-M. Even minor variations in spelling, logo design, or class descriptions will trigger a refusal.

2. Not Budgeting for Refusal Responses

Many Indian businesses budget only for the filing fees and are unprepared for the cost of responding to provisional refusals. Countries like the USA and EU regularly issue office actions that require local attorney engagement costing $500 to $3,000 per response. Budget an additional 30% to 50% of the filing cost for potential refusal responses across all designated countries.

3. Designating Too Many Countries Initially

Filing in 20+ countries on day one is rarely necessary. Start with 5 to 8 priority markets where you have current business operations or imminent expansion plans. You can always add countries later through subsequent designations. Over-designating wastes fees on countries where you may not operate for years and increases the risk of provisional refusals that require expensive local attorney engagement.

Related Resources

• Trademark Registration in India - register your base mark before filing internationally
• How to File Trademark Assignment - transfer trademark ownership
• How to Copyright a Song or Music in India - protect your creative works
• Copyright Registration - register any creative work with the Copyright Office
• Patent Registration - protect inventions and innovations

Summary

The Madrid Protocol provides Indian businesses an efficient route to protect their trademarks across 132 countries through a single application filed with the Indian Trademark Registry. The process involves securing a base mark in India, filing Form TM-M with an Rs 10,000 handling fee, paying WIPO's base fee of 653 CHF plus individual country designation fees, and managing national examinations in each designated country over 12 to 18 months. The registration is valid for 10 years with unlimited renewals. Start with 5 to 8 priority markets, budget for potential refusal responses, and be aware of the 5-year central attack risk. For Indian brands expanding globally, the Madrid Protocol remains the most cost-effective path to international trademark protection.