Intellectual Property Rights - Law and Practice · Trademarks

Madrid Protocol and International Trademark Registration in India

Updated 11 October 2026 · Fact-checked

The Madrid Protocol lets you seek trademark protection in many countries through one international application filed via your home office. In India, the Madrid Protocol Chapter of the Trade Marks Act, 1999 (section 36A onwards) applies. You file based on a pending application or registered mark; the Registrar certifies and forwards it to WIPO's International Bureau.

Understand International Registration and Madrid Protocol

A trademark is protected country by country. Without a treaty, a brand owner must file separately in each country, in each language, with each local fee. The Madrid System removes much of this by letting one application cover many countries.

The system is administered by the International Bureau of WIPO. Under the Act, the Madrid Protocol is the Protocol adopted at Madrid on 27 June 1989, as amended. A country or intergovernmental organisation that is party to it is a Contracting Party. Section 36A applies the Chapter to international applications and international registrations under the Protocol.

Everything starts from a home mark. A basic application is an application filed under section 18 and used as the basis for an international registration. A basic registration is a mark registered under section 23 and used the same way. Under section 36D(1), the applicant or registered proprietor may make an international application on the form prescribed by the Common Regulations.

The application must name the Contracting Parties where protection is wanted (section 36D(3)). The Registrar certifies that its particulars match the basic application or registration, and forwards it to the International Bureau within the prescribed period (section 36D(4)). The International Bureau records the mark in its register as an international registration.

The key risk is dependency. For five years from the international registration, the international registration depends on the basic application or registration. If the basic mark is withdrawn, cancelled, expired or finally refused, protection ceases to that extent (section 36D(5)). This is often called central attack.

The Madrid route also touches refusal grounds. Under section 11, the definition of an earlier trade mark includes an international registration referred to in section 36E. So such an international registration can count as an earlier trade mark when a later Indian application is examined.

Key rules to remember

Scope of Chapter: Section 36A: Chapter applies to international applications and international registrations under the Madrid Protocol; Inserted by Act 40 of 2010, in force from 8 July 2013.
Originating application: Section 36D(1): applicant of a section 18 application, or registered proprietor under section 23, may file an international application; The home mark can be pending or registered. Form is as per the Common Regulations.
Extension by holder: Section 36D(2): holder of an international registration may apply to extend protection to any other Contracting Party; This is a subsequent designation. Section 36D(3) requires the Contracting Parties to be designated.
Registrar's role: Section 36D(4): certify particulars, then forward to the International Bureau within the prescribed period; The Registrar certifies and forwards the application to the International Bureau for registration (section 36D(4)).
Dependency period: Section 36D(5): basic mark withdrawn, cancelled, expired or finally refused within 5 years of international registration → international protection ceases, wholly or to that extent; Applies even if the registration was transferred to another person.
Pending proceedings proviso: If appeal, withdrawal action or opposition began within 5 years, a later final decision is deemed to have occurred within the 5 years; Closes the gap where litigation runs past year five.
Registrar's reporting duty: Section 36D(6) and (7): report relevant events during the 5 years and notify cancellation to the International Bureau; Cancellation is notified keeping in view the current status of the basic mark.
Well-known mark bar: Section 11(2): identical or similar mark, for non-similar goods, refused if the earlier mark is well-known in India and use would take unfair advantage of, or harm, its distinctive character or repute; Under section 11(5) this ground is raised only in opposition by the earlier proprietor.

How to solve International Registration and Madrid Protocol questions

Use this order for any question on international registration, whether it asks for a procedure, a risk or a fact-based advice.

1Identify the direction. Is the mark originating from India (section 36D) or is an international registration being relied on as an earlier mark under section 11?
2Name the basic mark. Check whether there is a section 18 application or a section 23 registration, and who holds it.
3State the filing rule. The applicant or proprietor files on the Common Regulations form and names the Contracting Parties.
4Describe the Registrar's role: certify that particulars match, state dates and numbers, and forward to the International Bureau within the prescribed period.
5Test the five-year dependency. Check whether the basic mark was withdrawn, cancelled, expired or finally refused, and whether proceedings began within five years.
6Apply section 11 where an earlier mark is in issue: the Explanation says an earlier trade mark includes an international registration referred to in section 36E. Check well-known mark rules if goods differ.
7Conclude with the practical advice, such as protecting the basic mark or filing separately where dependency is risky.

Quickest way: Direction, basic mark, five years

When to use it: Short-answer or case questions where time is limited and the facts involve a Madrid filing.

Write the direction: out of India under section 36D, or into India as an earlier mark under section 11.
Write the basic mark and its status in one line.
Write the rule: certify, forward to the International Bureau, designate Contracting Parties.
Write the five-year test and the proviso on pending appeals or oppositions.
End with one line of conclusion and one practical step.

Common mistakes in International Registration and Madrid Protocol

Saying the Indian Registrar grants the international registration.
Students assume the home office decides everything.
Fix: Write that the Registrar certifies and forwards; the International Bureau registers the mark in its register.
Thinking an international application can be filed with no Indian mark at all.
The word 'international' hides the home-mark requirement.
Fix: State that section 36D(1) needs a section 18 application or a section 23 registration as the base.
Ignoring the five-year dependency.
Students remember only the advantages of one filing.
Fix: Always mention that if the basic mark fails within five years, protection ceases to that extent.
Forgetting the proviso on pending appeals and oppositions.
The proviso is short and sits at the end of sub-section (5).
Fix: Add that a final decision after five years is deemed to be within it if the appeal, withdrawal action or opposition started earlier.
Treating section 36D(2) as the same as section 36D(1).
Both are international applications.
Fix: Sub-section (1) is the first filing from a basic mark. Sub-section (2) is a holder of an international registration extending to more Contracting Parties.
Stating that well-known status requires use or registration in India.
Students confuse it with ordinary rights.
Fix: Cite section 11(9): the Registrar cannot require use, registration or application in India, or being well-known to the public at large.

Worked examples

Example 1

Anaya Textiles Pvt Ltd, Surat, has a trade mark application pending under section 18. It wants protection in several foreign countries. Advise on whether and how it can proceed under the Trade Marks Act, 1999.

Show the solution

Provision: section 36D(1) allows the applicant of a section 18 application to make an international application on the form prescribed by the Common Regulations.
Analysis: Anaya has a pending application, which is a basic application under section 36B(b). A registration is not necessary.
Section 36D(3) requires it to designate the Contracting Parties where protection is wanted. Those must be parties to the Madrid Protocol.
The Registrar must certify that the particulars match the pending application, state its date and number, and forward the international application to the International Bureau within the prescribed period (section 36D(4)).
Risk: for five years from the international registration, if the basic application is withdrawn, cancelled or finally refused, protection ceases to that extent (section 36D(5)).
Conclusion: Anaya can file now, and should prosecute its Indian application carefully during the five years.

Answer: Yes. Anaya may file an international application under section 36D(1) based on its pending section 18 application, designating Contracting Parties. The Registrar certifies and forwards it to the International Bureau. Protection depends on the Indian application for five years.

Example 2

Veda Foods holds an international registration based on an Indian registration. In year three the Indian registration is cancelled in respect of all the goods covered. Was international protection lost?

Show the solution

Provision: section 36D(5) says that if, before the expiry of five years of the international registration, the basic registration is cancelled in respect of all or some of the goods or services, the protection resulting from the international registration ceases to have effect.
Facts: cancellation occurred in year three, which is inside the five-year period, and it covers all the goods.
The proviso on pending appeals or oppositions is not needed here, because the cancellation itself took place within five years. It matters where a final decision comes after year five.
Extent: protection ceases to the extent of the cancellation. Here the cancellation covers all the goods, so the protection ceases for all of them. Had only some goods been cancelled, protection would have ceased only for those goods.
Registrar's duties: sections 36D(6) and (7) require the Registrar to transmit relevant information to the International Bureau during the five years and to notify cancellations to be effected, keeping in view the current status of the basic registration.
Conclusion: the international protection ceases.

Answer: Yes. Cancellation of the basic registration for all the goods within five years ends the protection resulting from the international registration (section 36D(5)). The Registrar's duties to inform and notify the International Bureau are in sections 36D(6) and (7).

Exam tips

Quote section numbers from 36A to 36D correctly and name the Contracting Party, basic application and International Bureau in your answer.
In case questions, check the dates first. The five-year window decides whether the dependency rule applies.
Always mention the proviso to section 36D(5) when the facts show an appeal or opposition.
Write advantages and disadvantages in two short lists: one filing and wide coverage against dependency on the basic mark.
For well-known marks, link to section 11(2), (6) and (9) rather than writing a general essay.

Practice questions from Trademarks

International Registration and Madrid Protocol: frequently asked questions

Can I file a Madrid application from India without an Indian trademark?

No. Section 36D(1) requires a section 18 application or a section 23 registration as the basic mark. Without one, you must first file in India.

What is central attack under the Madrid system?

It is the loss of international protection when the basic mark fails within five years. Section 36D(5) says protection ceases if the basic application or registration is withdrawn, cancelled, expired or finally refused.

Who forwards the application to WIPO?

The Registrar of Trade Marks. Under section 36D(4), the Registrar certifies that the particulars match the Indian record and forwards the application to the International Bureau within the prescribed period.

Can an international registration block a later Indian application?

It can count as an earlier trade mark. The Explanation to section 11 says an earlier trade mark includes an international registration referred to in section 36E. It can then be relied on if the section 11 conditions are met.