The Madrid System for international registration of marks

1. What the Madrid System is

The Madrid System is a WIPO-administered arrangement that lets a trade mark owner obtain protection in many countries through one international application, filed in one language, with one set of fees, through the owner’s home office. It does not create a single international mark. It produces a bundle of national (or regional) protections, each governed by the law of the country designated.

It rests on two treaties:

• the Madrid Agreement Concerning the International Registration of Marks, 1891, and
• the Protocol Relating to the Madrid Agreement, 1989, which entered into force in 1995 and became operational in 1996.

The Protocol was made to attract countries, including the UK, the US and Japan, that would not join the Agreement. It allowed an international application to be based on a national application (not only a registration), allowed a longer refusal period of eighteen months, allowed individual fees, added English as a working language, and created transformation as a remedy for central attack. Today every member of the Madrid Union is party to the Protocol, so the Protocol governs in practice. The European Union and the African Intellectual Property Organization are members as intergovernmental organisations.

2. How it works, step by step

1. Basic mark. The applicant must have a national application or registration (the basic mark) in the office of a contracting party where he is a national, is domiciled, or has a real and effective industrial or commercial establishment. This office is the office of origin.
2. International application. Filed through the office of origin, which certifies that the details correspond to the basic mark. The applicant designates the contracting parties in which protection is sought and lists goods and services under the Nice Classification, not wider than the basic mark.
3. Examination by the International Bureau of WIPO. Formal examination only: classification, fees, and compliance with the regulations. It does not examine registrability.
4. International registration. The mark is entered in the International Register, published in the WIPO Gazette of International Marks, and notified to each designated office. If the office of origin received the application within two months of filing, the date of international registration is the date of receipt by the office of origin.
5. Substantive examination by each designated office under its own law, as if the mark had been filed there directly. The office may issue a provisional refusal within twelve months, or within eighteen months if the party has made a declaration under Article 5(2)(b) of the Protocol; a refusal based on an opposition may come later where the party has declared so under Article 5(2)(c).
6. Protection. If no refusal is notified in time, or a refusal is withdrawn, the mark has the same protection in that country as if it had been registered by its office.
7. Management. Renewal every ten years, changes of ownership, limitations of goods and changes of name or address are recorded centrally with WIPO, with effect in all designated parties. The owner can add countries later by subsequent designation.

3. Dependency, central attack and transformation

For five years from the date of international registration, the protection resulting from it depends on the basic mark (Article 6(3) of the Protocol). If, within those five years, the basic mark is refused, withdrawn, cancelled or limited, whether by an opposition, a non-use attack or a rectification action begun in that period, the international registration is cancelled to the same extent in every designated party. A third party can therefore destroy the international registration everywhere by attacking the basic mark in one country. This is central attack.

The Protocol softens this through transformation (Article 9quinquies). Within three months of cancellation, the holder can file national applications in the designated parties for the same goods and services, and they are treated as filed on the date of the international registration, keeping priority. After five years, the international registration becomes independent of the basic mark.

4. India and the Madrid Protocol

India acceded to the Madrid Protocol in 2013, and it took effect for India on 8 July 2013. The Trade Marks (Amendment) Act, 2010 inserted Chapter IVA (sections 36A to 36G), and the Trade Marks Rules provide the procedure. The main provisions:

• India as office of origin. An Indian national, or a person domiciled or with a real and effective establishment in India, with an Indian application or registration, may file an international application through the Trade Marks Registry, which certifies it and forwards it to WIPO.
• India as designated party. When an international registration designates India, the Registrar examines it as a national application. If he does not notify a refusal within the time allowed, the mark is treated as registered in India, and the holder has the same rights as a domestic registrant.
• Effect of cancellation. If an international registration is cancelled at the request of the office of origin, the protection in India ends to the same extent, and the holder may apply for transformation into a national application with the original date.

Before 2013, an Indian business had to file separately in each country, usually through local agents, and claim Paris Convention priority within six months of the Indian filing (Article 4 of the Paris Convention, given effect by the provisions of the Act on convention applications).

5. Madrid compared with the alternatives

How this is examined

Answer the 2025 question in four parts: the treaties and why the Protocol was needed, the procedure in order, dependency and transformation, and India’s Chapter IVA. Close with the evaluation. A short note on the Madrid Protocol uses sections 1 to 3 in compressed form.