A brand in India is safe only inside India. The moment you cross borders, your rights shrink. That’s where the Madrid Protocol, run by the World Intellectual Property Organization (WIPO), steps in. It gives you one application, one route, many countries. So, how to secure trademark protection in India via WIPO? Let’s dive in.
What is the Madrid Protocol & why India matters
India joined the Madrid Protocol on July 8, 2013. Since then, Indian businesses have been able to use this international route. But every country applies its own national law. In India, that means the Trade Marks Act, 1999. Section 18 of the Act covers applications for trademark registration. Section 9 lays down grounds for refusal, and Section 11 blocks marks that are identical or confusingly similar. So even if you apply through WIPO, the Indian Trade Marks Registry (CGPDTM) will still test your mark against these rules.
Imagine you file an international application for your Indian clothing brand “Royal Wear.” WIPO processes it. But in India, the Registry finds “Royal Wearz” already pending in Class 25. Under Section 11(1), your application may face provisional refusal for being too similar.
Prerequisites: What you must have before filing
Before you think global, fix your base in India. The Madrid Protocol works only if you meet the basics. Miss a step, and your international trademark registration may collapse.
Basic mark in India
You need a trademark already filed or registered in India. This is your “basic application” or “basic registration.” Without it, you cannot file through Madrid. The law is clear. Section 18 of the Trade Marks Act, 1999 says only a person who has applied for or registered a mark can claim rights.
Applicant eligibility
Not everyone can apply. You must be an Indian national, or domiciled in India, or running a commercial office in India. This rule ensures India is your “Office of Origin.”
Same or narrower goods and services
The international list cannot be wider than your Indian list. It must match or be narrower. This is because WIPO accepts only what your basic mark already covers. If your Indian mark is for “shoes” under Class 25, you cannot suddenly add “perfumes” in your Madrid application.
Matching name and address
The applicant’s name and address in India must match exactly in the Madrid application. Any mismatch can lead to refusal. It’s about identity. The law under Rule 25 of the Trade Marks Rules, 2017 makes applicant details a core requirement.
Power of Attorney and fees
Usually, you’ll appoint an Indian trademark attorney to act on your behalf. That means executing a Power of Attorney (PoA). You must also pay India’s handling fee for certifying the application. WIPO fees in Swiss francs, which include the basic fee and individual country fees.
If you skip or misdo any of these, the chain breaks. WIPO may reject your Madrid Protocol trademark application. Or India may block your designation under its law. If your Indian basic mark is refused during the first five years, your international registration linked to it may also fall. This is called the dependency principle under the Madrid Protocol.
The step-by-step path: from India to WIPO and back
Here’s how to secure trademark protection in India via WIPO under the Madrid Protocol.
Step 1: Trademark search and strategy
Don’t apply blind. Do a trademark search in India.
- Reliable trademark checker tool.
- Indian Trademark Registry database.
- WIPO’s Global Brand Database.
- Local databases in the countries you plan to designate.
If a similar mark already exists, your application may face refusal. Start with key markets. Don’t over-designate. You can add new countries later using “subsequent designation.”
Step 2: File or confirm your basic Indian mark
No Madrid application without a base. File a trademark application in India if you haven’t. Already filed? Double-check details - your name, address, and goods or services.
Step 3: Prepare the Madrid application
Use Form MM2 (E) when India is your office of origin. Fill in:
- Number and date of your basic Indian mark.
- Applicant’s name and address.
- List of goods and services.
- Countries you want to designate.
- Power of Attorney if using an agent.
Step 4: Submit to the Indian office of origin
File your MM2 with the Indian Trademarks Registry (CGPDTM). They will:
- Verify the form.
- Certify the application.
- Forward it to WIPO.
If there’s an error, they may ask for corrections or refuse certification**.**
Step 5: WIPO’s formal examination
Once WIPO receives your certified application, it checks compliance. If all good then your mark is recorded in the International Register. Published in the WIPO Gazette of International Marks. Notified to each designated country, including India.
Step 6: Examination in India (as a designated country)
Now India examines the mark again - this time as a designated country. India must act within 18 months of WIPO’s notification. Examination happens under the Trade Marks Act, 1999. Grounds of refusal include Section 9 (absolute grounds, e.g., descriptive or generic words) and Section 11 (relative grounds, e.g., conflict with earlier marks). If objections exist, India issues a provisional refusal. If not, it grants protection.
Step 7: Respond to provisional refusals
Got a refusal? Act fast. File a written reply. Attend a hearing if required. Request extension of time if available. You’ll need an experienced Indian trademark attorney for this. If you miss the deadline, protection is refused in India.
Step 8: Grant of protection
If accepted then your mark is protected in India under the Madrid Protocol. You get an IRDI number (International Registration Designating India). It is published in the Indian Trade Marks Journal. From here, it enjoys the same rights as a national registration.
Step 9: Manage, renew, expand
Your international trademark registration lasts 10 years. Renew it with WIPO every 10 years.
You can also update name, address, or ownership. Add new countries later by “subsequent designation.”
How much does it cost to get a trademark in India and WIPO / Madrid fees?
Cost depends on where you file. For trademark protection in India, fees vary by applicant type and number of classes. For e-filing in India, the government fees are lower. For individuals, startups, and small enterprises 4,500 per class. For large entities like companies and LLPs 9,000 per class. Add hearing or attorney costs if objections come up.
For international trademark registration, costs rise: WIPO basic fee is about 653 Swiss francs (₹50,000–₹60,000). Extra fees for each designated country. Supplementary fees if you pick many countries. India charges a fee to certify and forward your application to WIPO. Attorney help for objections adds more. India alone is cheaper. Madrid costs more, but one filing can protect your brand in many countries.
Best practices to avoid pitfalls
Stay smart. Work with a skilled Indian trademark attorney. Keep your details the same in both the Indian filing and the Madrid application. Pick countries carefully. Start with a few, add more later. Watch your deadlines like a hawk. Use tools or services to track every update. And never neglect your basic Indian registration. If it falls, your whole international trademark registration can fall with it.
Borders don’t stop brands…Mistakes do!
The Madrid Protocol makes global trademark protection faster and simpler. One filing, many countries, easier renewals. But it’s not automatic. Each country has its own rules. In India, the Trade Marks Act, 1999 still applies. Miss a detail or deadline, and protection can fail. That’s why you need experts. Trademarkia’s expert trademark attorneys handle filings, objections, renewals, and global strategy. We make sure your brand crosses borders - and stays protected everywhere.
Your brand deserves more than luck; it deserves Trademarkia!
