How to File an International Trademark Under the Madrid System

The Madrid System is an international treaty administered by the World Intellectual Property Organization (WIPO) that enables trademark owners to file a single application to seek protection in multiple member countries. For Indian applicants, this system is accessible because India became a member of the Madrid Protocol on July 8, 2013. The key advantage is that you file one application in one language (English, French, or Spanish) and pay one set of fees in Swiss francs, instead of filing separate applications in each country.

The process works through a central application. You must first have a basic trademark application or registration with the Indian Patent Office (IPO). This "basic mark" serves as the foundation for your international application. You then file an international application through the IPO, which certifies it and forwards it to WIPO. WIPO examines the application for formalities and publishes it in the WIPO Gazette of International Marks. After that, each designated country's trademark office has 12 or 18 months to examine the application under its national laws and either grant or refuse protection.

To file an international trademark application under the Madrid System from India, you must meet two primary conditions. First, you must be a national of India, or be domiciled in India, or have a real and effective industrial or commercial establishment in India. Second, you must have a basic application or registration filed with the Indian Patent Office. This basic mark must be for the same trademark and cover the same goods or services as your international application.

The basic mark must be pending or registered. If your basic application is pending, you can still file an international application, but the international registration will be dependent on the basic mark for five years. This is known as the "central attack" rule. If the basic application is refused or the basic registration is cancelled within five years of the international registration date, the international registration will be cancelled to the same extent. You can then transform the international registration into national applications in each designated country, but this involves additional costs and procedures.

The filing process involves several clear steps. First, ensure you have a basic trademark application or registration with the Indian Patent Office. This can be a pending application or a registered trademark. Second, identify the countries where you want protection. You can designate any member country of the Madrid Protocol. Third, prepare your international application using WIPO's online system, Madrid e-Filing, or file a paper application through the Indian Patent Office.

The application must include: the applicant's name and address, a reproduction of the mark, a list of goods and services classified according to the Nice Classification, the basic application or registration number, and the designated countries. You must also pay the required fees, which include a basic fee (653 Swiss francs for a black and white mark, 903 Swiss francs for a color mark), a supplementary fee for each class of goods or services beyond three, and a complementary fee for each designated country. The Indian Patent Office will certify the application and forward it to WIPO within two months. WIPO then examines the application and, if acceptable, registers the mark and publishes it.

After WIPO registers your international trademark, it notifies each designated country's trademark office. Each country then has 12 months (or 18 months for countries that have made a declaration) to examine the application under its national laws. During this period, the country may issue a provisional refusal if the mark does not meet its requirements, such as being descriptive, confusingly similar to an existing mark, or lacking distinctiveness.

If a provisional refusal is issued, you must respond through a local agent in that country. The refusal is handled under the national laws of that country, not under the Madrid System. If no refusal is issued within the time limit, the mark is automatically protected in that country as if it were a national registration. The international registration is valid for 10 years and can be renewed for successive 10-year periods by paying renewal fees to WIPO. You can also later extend protection to additional countries by filing a subsequent designation through WIPO.

The costs for an international trademark application under the Madrid System are structured in Swiss francs. The basic fee is 653 Swiss francs for a black and white mark or 903 Swiss francs for a color mark. For each class of goods or services beyond three, you pay a supplementary fee of 100 Swiss francs per class. For each designated country, you pay a complementary fee of 100 Swiss francs, unless the country has an individual fee, which is common for countries like the United States, China, Japan, and the European Union.

The timeline from filing to registration with WIPO is typically 2-4 months if no objections are raised. After WIPO registration, each designated country has 12 or 18 months to examine the application. Therefore, you can expect to know the outcome in most countries within 12-18 months from the date of international registration. The total cost for a basic application covering three classes and designating five countries with standard complementary fees would be approximately 1,653 Swiss francs (basic fee of 653 + 5 complementary fees of 100 each + 0 supplementary fees for three classes). Individual fees for certain countries can be higher, so check WIPO's fee calculator before filing.

If you are considering filing an international trademark application, start by ensuring your basic Indian trademark application or registration is in order. Then, consult a trademark attorney or agent registered with the Indian Patent Office to prepare and file your international application, as errors in the application can lead to refusals or loss of rights.

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This page provides preliminary information. It is not legal advice. For your matter, consult a qualified professional.