Trademark Registration under Madrid System: Frequently Asked Questions

Introduction

The Madrid System provides a centralized mechanism for trademark owners to seek protection in multiple countries and regions through one international application. It is administered by the World Intellectual Property Organization (WIPO), but each designated member examines the trademark according to its own domestic law.

For an applicant filing through India, Trademark Registration under Madrid System must be based on a corresponding Indian trademark application or registration. The international application is filed electronically through the Indian Trade Marks Registry as the Office of Origin and, after certification, is transmitted to WIPO.

These FAQs cover issues involving the basic mark, five-year dependency, provisional refusal, transformation, subsequent designation, MM18, WIPO fees, ownership changes and renewal.

What Is Trademark Registration under Madrid System?

Trademark Registration under Madrid System allows an eligible trademark owner to seek protection in several Madrid System members through a centralized international filing.

An applicant filing through India must be an Indian national, domiciled in India, or have a real and effective industrial or commercial establishment in India. A corresponding Indian trademark application or registration must also exist as the basic mark.

Applicants who do not yet have an Indian basic mark can first consider our Trademark Registration service.

FAQs on Trademark Registration under Madrid System

1. Can a pending Indian trademark application be used as the basic mark for a Madrid filing?

Yes. A completed Indian trademark registration is not mandatory. A pending Indian trademark application can serve as the basic mark, provided the international application corresponds with that application and the applicant is entitled to use India as the Office of Origin.

2. Can a Madrid application cover goods or services not included in the Indian basic mark?

No. The international application cannot have a broader scope of goods or services than the Indian basic application or registration. The specification may be narrower, but additional goods or services outside the basic mark require an appropriate new national or regional filing first.

3. Can an Indian applicant designate India in a Madrid application filed through India?

No. An applicant cannot designate the Madrid System member whose trademark office acts as the Office of Origin for that international application. Therefore, where India is the Office of Origin, protection in India continues through the underlying Indian basic application or registration.

4. What happens to the international registration if the Indian basic application receives an objection?

An examination objection does not automatically cancel the international registration. However, if the basic mark ultimately ceases to have effect wholly or partly under the five-year dependency rule, the international registration may be cancelled to the corresponding extent. Businesses facing an Indian objection can consider our Trademark Objection Reply service.

5. How does the five-year dependency rule affect Trademark Registration under the Madrid System?

For the first five years from the date of the international registration, the international registration remains dependent on the basic mark. If the basic application or registration is refused, withdrawn, cancelled, not renewed, or otherwise ceases to have effect during this period, the international registration may be cancelled to the same extent.

Proceedings started during this five-year period can also affect the international registration even if the final decision is made after the five-year period ends. After the dependency period ends, the international registration generally becomes independent of the basic mark.

6. Can international protection be preserved if the registration is cancelled because the basic mark fails?

Potentially, yes. Where the international registration is cancelled at the request of the Office of Origin because of the basic mark’s failure under the dependency rule, the holder may seek transformation into national or regional applications.

Transformation generally must be requested within three months from recording of the cancellation.

7. Does a WIPO International Registration Certificate mean the trademark is protected in every designated country?

No. A WIPO International Registration Certificate confirms that the mark has been recorded in the International Register after WIPO completes its formal examination. It does not automatically mean that trademark protection has been granted in every designated country or region.

Each designated trademark office examines the mark under its own national or regional law. It may grant protection or issue a provisional refusal. If no refusal is issued within the applicable Madrid System time limit, protection may take effect in that territory in accordance with the Madrid Protocol and applicable domestic law.

8. What happens if one designated Madrid System member provisionally refuses the trademark?

A provisional refusal generally affects only the country or region that issued it. It does not automatically affect trademark protection granted or sought in other designated Madrid System members.

WIPO forwards the provisional refusal to the trademark holder. Any response, review, or appeal must then be handled according to the law and procedure of the concerned trademark office. The refusal notice generally specifies the grounds for refusal, the response period, the authority before which a response or appeal must be filed, and whether a local representative is required.

9. How long does a designated trademark office have to issue a provisional refusal?

The standard Madrid Protocol refusal period is generally 12 months, but a member may declare an 18-month period. Certain opposition-based refusals may be notified after 18 months where the applicable Madrid Protocol requirements for such extended opposition periods are satisfied.

10. Does a subsequent designation get the same protection date as the original international registration?

Generally, no. A country or region added later through a subsequent designation normally receives protection based on the effective date of that subsequent designation rather than automatically receiving the original international registration date.

However, the subsequent designation remains part of the same international registration and generally follows the same renewal date. Country-specific restrictions may also apply depending on the particular Madrid System member and the timing of the designation. Ebizfiling also provides Madrid e-Filing assistance for international trademark filings.

11. Can new goods or services be added through a subsequent designation?

Only goods or services already covered by the international registration can be included in a subsequent designation. A subsequent designation cannot expand the international registration to genuinely new goods or services outside its existing scope. Such expansion generally requires a new trademark filing.

12. Is Form MM18 still required when the United States is designated under the Madrid System?

Yes. When the United States is designated in an international application or subsequent designation, a Declaration of Intention to Use the Mark is required. The current Form MM18 contains the declaration required for a U.S. designation and must be completed in English.

If Form MM18 is missing or does not meet the applicable requirements, WIPO may issue an irregularity notice or allow the deficiency to be corrected, depending on the filing. If the issue is not corrected within the applicable period, the U.S. designation may be disregarded while other valid designations may continue, where applicable.

13. Can ownership of a Madrid international registration be transferred to another person or company?

Yes. Ownership of an international registration can generally be changed wholly or partly, subject to Madrid System eligibility requirements applicable to the new holder.

Businesses dealing with domestic trademark ownership changes can separately consider our Trademark Assignment service.

14. How long is Trademark Registration under Madrid System valid, and when can it be renewed?

An international registration is renewable every 10 years through WIPO. Renewal can be requested within six months before expiry and also during a six-month grace period after expiry. WIPO currently imposes a 50% surcharge for renewal during the post-expiry grace period.

Indian trademark renewal remains separate. Ebizfiling also provides a Trademark Renewal service.

15. What fees apply when an Indian applicant files an international trademark application?

For applications originating from India, the Indian Trade Marks Registry currently charges a ₹5,000 handling fee for certification and transmission of the international application with MM2(E). Separate WIPO fees are payable in Swiss francs.

WIPO’s current basic filing fee is 653 CHF for a black-and-white mark or 903 CHF for a colour mark, plus applicable complementary, supplementary or individual fees depending on the designated members and classes.

Trademark Registration under Madrid System Support with Ebizfiling

International trademark filing requires coordination between the Indian basic mark, the Indian Trade Marks Registry, WIPO and the trademark offices of the countries or regions where protection is requested.

Ebizfiling assists businesses with Trademark Registration under Madrid System, including reviewing the basic mark, preparing international filing information, identifying relevant classes and designated markets, and supporting the filing process. Businesses seeking assistance can explore Ebizfiling’s International Trademark Registration under Madrid Protocol service.

Need Help with Trademark Registration under Madrid System? Ebizfiling Can Assist

Conclusion

Trademark Registration under Madrid System provides a centralized route for seeking trademark protection across multiple Madrid System members, but it does not create one worldwide trademark right. Protection in each designated territory remains subject to examination under that member’s trademark law.

Indian applicants must maintain a qualifying Indian basic application or registration and should carefully consider the five-year dependency rule, country-specific refusals, subsequent designations, WIPO requirements and renewal obligations.

Understanding these technical requirements can help businesses use the Madrid System more effectively while reducing avoidable risks in international trademark protection.