Madrid Protocol Trademark

The Madrid Protocol (formally the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks 1989) allows an applicant whose base application or registration exists in India (the 'Office of Origin') to file a single international application in Form MM2 through the Trade Marks Registry of India, designating up to 130+ member countries. India acceded to the Madrid Protocol in 2013, and Sections 36A to 36G of the Trade Marks Act 1999 (inserted by the Trade Marks (Amendment) Act 2010) govern the procedure for Indian applicants. The application is transmitted to the World Intellectual Property Organization (WIPO), which registers the mark in the International Register and notifies each designated country's trademark office. Each designated country's office then has 12 months (extendable to 18 months under Article 5(2)(b) of the Protocol) to raise an objection; absent objection, the mark is deemed protected in that country. A single annual maintenance fee to WIPO replaces country-by-country renewals.

Under Article 2(1) of the Madrid Protocol and Section 36B of the Trade Marks Act 1999, an applicant must have a 'basic mark' in India — either a pending application (Form TM-A) or a registered trademark on the Indian Trade Marks Register — before filing an international application in Form MM2. The international application must be identical to the basic mark in terms of the mark itself and the name and address of the applicant. If the basic Indian application is refused or abandoned within 5 years of the international registration date (the 'dependency period' under Article 6(3) of the Madrid Protocol), the international registration is also cancelled — this is known as 'central attack'. For this reason, many applicants prefer to wait for the Indian application to proceed to registration before filing MM2, even though the Protocol permits filing on the basis of a pending application. A Chartered Accountant in practice for IP matters can advise on this risk-benefit trade-off.

The international application in Form MM2 must designate the same Nice Classification classes (under the Nice Agreement Concerning the International Classification of Goods and Services, 12th Edition 2023) as covered by the Indian base mark, or a subset thereof — it cannot add new classes. WIPO fees consist of a basic fee (653 CHF for a mark in colour, 653 CHF for monochrome as of 2024 Schedule of Fees), a complementary fee per designated country (for most countries), and a supplementary fee for each class beyond three. Individual countries may instead charge an 'individual fee' in lieu of the complementary fee (as permitted under Article 8(7) of the Madrid Protocol); the European Union Intellectual Property Office (EUIPO), United States, Japan, and the UK charge individual fees which are substantially higher. WIPO's fee calculator at wipo.int/madrid provides a precise estimate per designation. All fees are payable in Swiss Francs (CHF) to WIPO.

The international application in Form MM2 (available on the WIPO website) must be submitted to the Trade Marks Registry of India (the Office of Origin) along with Form TM-M (the Indian transmittal form), prescribed fees in Indian Rupees to the Indian Registry, and the WIPO fees payable separately in CHF via WIPO's online payment system. Under Rule 106A of the Trade Marks Rules 2017, the Registrar certifies that the particulars in the international application correspond with those in the Indian basic application or registration and transmits the certified application to WIPO within 2 months. The Trade Marks Registry currently accepts Form MM2 submissions only through the IP India e-filing portal (ipindia.gov.in). WIPO issues an international registration certificate with the international registration date being the date the Trade Marks Registry received the application, provided WIPO receives it within 2 months of that date.

After WIPO registers the mark and notifies each designated country's trademark office, each office has 12-18 months (depending on whether it has made a declaration under Article 5(2)(b) of the Madrid Protocol) to issue a provisional refusal. If no refusal is issued, protection is confirmed automatically — the holder receives a 'Statement of Grant of Protection'. If a provisional refusal is issued, the holder must engage a local attorney in that country to respond within the office's deadline; WIPO has no jurisdiction over substantive examination decisions of national offices. In India, if a foreign mark designates India, the Trade Marks Registry examines it under Sections 9 and 11 of the Trade Marks Act 1999 and Section 36E governs the procedure for examination, acceptance, or refusal. The international registration lasts 10 years from the date of registration and is renewed directly with WIPO in Form MM11 before expiry under Article 7 of the Protocol, covering all designated countries in a single renewal.