Legal basis: Trade Marks Act 1999, Sections 36A‑36G — Effective: 8 July 2013. Source: https://www.wipo.int/madrid/en/members.html. Last updated: October 2026
The mistake founders often make
A SaaS founder in Visakhapatnam registers a brand in India, feels secure, and later discovers the same name is already taken in Germany when trying to close a reseller deal. The brand is unprotected abroad because the founder never used the Madrid Protocol correctly. Understanding what the Trade Marks Act 1999 (Chapter IVA) actually requires prevents this costly oversight.
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What the Trade Marks Act 1999 (Chapter IVA) mandates
India became a contracting party to the Madrid Protocol on 8 July 2013. Sections 36A‑36G were inserted by the Trade Marks (Amendment) Act 2010 to give domestic effect to the international system.
Core provisions
- Eligibility – An Indian national, a person domiciled in India, or any entity with a real and effective industrial/commercial establishment in India may file an international application through the Trade Marks Registry.
- Basic mark requirement – You must have an Indian application or registration for the mark. A pending application suffices; you do not need to wait for registration.
- Scope limitation – The goods/services covered internationally cannot exceed those listed in the Indian basic mark.
- Five‑year dependency (central attack) – For the first five years, the international registration mirrors the fate of the Indian basic mark. A refusal, withdrawal, or cancellation of the Indian mark within this window wipes out the international protection in every designated country.
- Designation by foreign applicants – When a foreign applicant designates India, the Indian Registry examines the mark under domestic law and may issue a provisional refusal.
- Duration & renewal – An international registration lasts 10 years and is renewable directly with WIPO in ten‑year blocks.
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Practical implications for founders
- No shortcut to international filing – You cannot file abroad before filing in India. The Indian filing is the “basic mark” on which the Madrid application rests.
- Class selection matters – If your Indian application is limited to Class 42 (software services) but you later expand to Class 9 (downloadable apps), the Madrid filing cannot later add Class 9 without a new Indian basic mark.
- Central‑attack risk – Investors and acquirers view a five‑year dependency as a material risk. Ensure the Indian mark is robust before scaling internationally.
- National examination still applies – WIPO records the international registration, but each designated country conducts its own substantive examination. Expect separate refusals and possible local representation costs.
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Comparison: Madrid Protocol vs. Indian‑only filing
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Step‑by‑step filing guide
Step 1: Secure the Indian basic mark
File a trademark application in the relevant class(es) through the IP India portal (https://ipindia.gov.in). A pending application is sufficient to serve as the basis.Step 2: Prepare the international application (Form MM2(E))
Use WIPO’s Form MM2(E) via the IP India e‑filing system. Provide the Indian application/registration number, filing date, class(es), a clear reproduction of the mark, and the list of goods/services (which must not exceed the Indian scope).Step 3: Pay the fees
Use the official WIPO fee calculator (https://madrid.wipo.int/feecalcapp) to estimate total costs before filing.
Step 4: Certification & transmission
The Indian Registry certifies that the international application matches the Indian basic mark and forwards it to WIPO’s International Bureau.Step 5: Examination by designated countries
Each designated office has up to 12 months (or 18 months where a declaration extends the period) to issue a provisional refusal. No refusal means the mark is protected in that jurisdiction. If a refusal occurs, a local representative must respond.Step 6: Renewal
Every ten years, renew the international registration directly with WIPO. One renewal covers all designated countries where the mark remains in force.---
Key point: A pending Indian trademark application can serve as the basis for a Madrid Protocol filing, but the international registration remains dependent on the Indian mark for five years.
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Frequently asked questions
Q: Can I file a Madrid application before my Indian trademark is registered, if only the application is pending?
A: Yes. The international application may be based on a pending Indian application or a registration. However, if the Indian application is later refused, withdrawn, or cancelled within five years of the international registration, the international registration is cancelled to the same extent (central‑attack rule).
Q: How many countries can I designate, and does it affect cost?
A: You may designate any or all of the 130 + Madrid members. Each designated country incurs its own fee (individual, supplementary, or complementary) and may require separate responses to refusals, so costs rise with the number of designations.
Q: What is the five‑year central‑attack window and why does it matter for investors?
A: For the first five years, the international registration depends on the Indian basic mark. A successful challenge to the Indian mark during this period nullifies the international protection in every designated country, reducing the IP’s valuation in due‑diligence.
Q: Does the Madrid filing protect my mark automatically in every designated country?
A: No. WIPO records the international registration, but each national office conducts its own substantive examination. Protection is granted only if the office does not issue a provisional refusal within the prescribed period.
Q: How long does an international registration last and how is it renewed?
A: An international registration is valid for ten years from the date of registration. Renewal is done centrally with WIPO every ten years, covering all designated countries where the mark remains in force.
Q: Can a foreign‑owned Indian private limited company use India as the office of origin?
A: Generally yes. Eligibility is based on the applicant’s nationality, domicile, or the existence of a real and effective industrial/commercial establishment in India. An Indian private limited company with genuine operations satisfies this requirement, irrespective of shareholder nationality.
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I’m CA Harun Raaj. If this affects your company’s compliance calendar, reach out.
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See Also
Frequently asked questions
Can I file a Madrid application before my Indian trademark is registered, if only the application is pending?
Yes. The international application may be based on a pending Indian application or a registration. However, if the Indian application is later refused, withdrawn, or cancelled within five years of the international registration, the international registration is cancelled to the same extent (central‑attack rule).
How many countries can I designate, and does it affect cost?
You may designate any or all of the 130 + Madrid members. Each designated country incurs its own fee (individual, supplementary, or complementary) and may require separate responses to refusals, so costs rise with the number of designations.
What is the five‑year central‑attack window and why does it matter for investors?
For the first five years, the international registration depends on the Indian basic mark. A successful challenge to the Indian mark during this period nullifies the international protection in every designated country, reducing the IP’s valuation in due‑diligence.
Does the Madrid filing protect my mark automatically in every designated country?
No. WIPO records the international registration, but each national office conducts its own substantive examination. Protection is granted only if the office does not issue a provisional refusal within the prescribed period.
How long does an international registration last and how is it renewed?
An international registration is valid for ten years from the date of registration. Renewal is done centrally with WIPO every ten years, covering all designated countries where the mark remains in force.
Can a foreign‑owned Indian private limited company use India as the office of origin?
Generally yes. Eligibility is based on the applicant’s nationality, domicile, or the existence of a real and effective industrial/commercial establishment in India. An Indian private limited company with genuine operations satisfies this requirement, irrespective of shareholder nationality.
Next steps on trademark protection
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