International Trademark Registration from India: Madrid Protocol and Form MM2(E)

Short answer: An Indian business can protect its trademark abroad through the Madrid Protocol, by filing one international application, Form MM2(E), through IP India's Comprehensive e-Filing system. The application must be based on your Indian trademark application or registration (the "basic mark"). You pay a ₹5,000 handling fee to the Indian Trade Marks Registry, plus WIPO's fees in Swiss francs for the countries you designate. The Registry certifies it and sends it to WIPO. Each designated country then examines the mark under its own law, so international registration is not automatic protection.

Who can file from India

According to IP India, an applicant can file an international application through the Indian office if they:

• are an Indian national; or
• are domiciled in India; or
• have a real and effective industrial or commercial establishment in India.

The applicant must also have a corresponding basic trademark application or registration in India. It does not have to be registered yet; a pending Indian application can serve as the base.

Step-by-step process

1. Have a basic mark in India. File in India first if you have not; see the trademark registration process.
2. File Form MM2(E) in the Madrid Protocol module of the Comprehensive e-Filing system. Enter the applicant, mark and goods or services (which must match or fall within the basic mark), and choose the member countries ("designated Contracting Parties").
3. Pay the Indian handling fee of ₹5,000 for certification and transmission (First Schedule to the Trade Marks Rules, 2017).
4. Certification by the Indian Registry. The Registry checks that the particulars correspond with the basic mark, certifies the application and transmits it electronically to WIPO's International Bureau.
5. WIPO examination. WIPO checks formal requirements and may issue an irregularity notice, for example for fees for the designated countries. Once complete, the mark is recorded in the International Register and published in the WIPO Gazette of International Marks.
6. Examination in each designated country. Each office examines the mark under its domestic law and may grant protection, raise objections or issue a provisional refusal within the time limits under the Protocol.

Costs

Some countries charge an "individual fee" that can be much higher than the standard complementary fee, so check each country in the calculator before you finalise the list. All Indian official trademark fees are in our trademark fees guide.

Points to understand before filing

• Dependency on the Indian mark for five years. Under Article 6(3) of the Madrid Protocol, the international registration depends on the basic mark for five years from its international registration date. If the Indian application is refused or withdrawn, or the Indian registration is cancelled within that time, the international registration is cancelled to the same extent. Article 9quinquies then allows the owner to convert ("transform") the cancelled designations into national applications, which keep the original date if filed within three months. So a weak Indian base, for example one facing a serious objection, is a risk.
• Duration and renewal. An international registration lasts ten years and is renewable, with a six-month grace period after expiry (WIPO).
• Add countries later. You can extend an existing international registration to more member countries by a subsequent designation.
• Not every country is a member. For a country outside the Madrid System, you must file a national application there.
• Clear the mark first. A mark that is free in India may be taken abroad. Search in each target country, not just in India; see trademark public search for the Indian check.

In India, the Madrid provisions are in Chapter IVA (sections 36A to 36G) of the Trade Marks Act, 1999; see our trademark law guide.