The Madrid system: international registration of marks
Intellectual Property Rights I · Unit V · Topic 19 of 20 · 5 min read
On this page
Cases checked to exist. Read the judgment before quoting a holding.
Every case cited here has been checked to exist — the citation resolves and names the right parties. The propositions attributed to each case have not been verified line by line against the judgment. Case names link through to the full judgment: read it before quoting a holding in an examination answer, and never carry a proposition from notes into court on trust.
1. Background
Under the Paris Convention a trader needed a separate application in every country, in its language, through local agents. The Madrid Agreement of 14 April 1891, a special agreement under the Paris Convention, created a system of international registration of marks through the International Bureau, now part of WIPO. It had drawbacks that kept major trading countries out: the basic mark had to be registered (not merely applied for) in the home country, the refusal period was only twelve months, fees were low and fixed, and French was the only language. The Protocol of 27 June 1989 (operational from 1996) removed these obstacles, and nearly all members now work under it. Together they are called the Madrid system.
The other “Madrid” instrument, the Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods (1891), is relevant to geographical indications and should not be confused with this one.
2. Salient features
- One application, one office, one language, one set of fees, designating as many contracting parties as the applicant wishes.
- Eligibility. The applicant must be a national of, or domiciled in, or have a real and effective industrial or commercial establishment in, a contracting party (section 36B(a)).
- Basic mark. The international application must be based on a national application (Protocol) or registration (Agreement) in the office of origin (sections 36B(b) and (c), 36D(1)).
- Filed through the office of origin, which certifies that the particulars correspond to the basic mark and forwards the application to the International Bureau (section 36D(4)).
- The International Bureau examines formalities, records the mark in the International Register, publishes it in the WIPO Gazette, and notifies each designated office.
- Each designated office examines under its own law and may refuse protection within twelve months, or eighteen months if it has so declared under the Protocol (India has: section 36E(2)). If it does not refuse in time, protection is deemed granted (section 36E(5)).
- Effect. From the date of international registration, protection in each designated country is the same as if the mark had been registered there (section 36F).
- Duration. Ten years, renewable for ten years by a single renewal at the International Bureau (section 36G).
- Subsequent designation of further countries and recording of changes (ownership, name, limitation) by a single request to the International Bureau (section 36D(2)).
3. Dependency and central attack
For five years from the date of international registration, the international registration depends on the basic mark. If within that period the basic application or registration is withdrawn, refused, cancelled or expires, in whole or in part, protection under the international registration ceases to the same extent in all designated countries (sections 36D(5) and 36E(8)). A third party can therefore destroy the international registration everywhere by a single successful attack on the basic mark at home: this is central attack. After five years the international registration becomes independent.
The Protocol softens this by transformation: if the international registration is cancelled following a central attack, the holder may, within three months, file national applications in the designated countries which keep the international registration date.
4. Procedure in India
Outgoing applications (India as office of origin). A person who has applied for or obtained registration under section 18 or 23 may file an international application on the form prescribed by the Common Regulations, through the head office of the Trade Marks Registry (sections 36C and 36D). The Registrar certifies it and forwards it to the International Bureau, and for five years informs the Bureau of any change in the status of the basic mark.
Incoming designations (India designated). The Registrar records the international registration, examines it as if it were an application under section 18 (sections 9 to 21 apply), advertises it, and allows opposition. He may refuse protection, after hearing the holder, and inform the Bureau within eighteen months; otherwise protection is deemed extended (section 36E). An international registration designating India replaces an earlier Indian registration of the same mark for the same owner, without prejudice to rights already acquired (section 36E(6)).
5. Advantages and limitations
- Advantages: lower cost, one filing and one renewal, no local agents at filing stage, a fixed time limit for refusals, and central management of the portfolio.
- Limitations: dependency on the basic mark for five years; the specification of goods cannot be broader than the basic mark; national examination still applies; and the system is useful only for countries that are members.
How this is examined
January 2026: “Discuss special provisions applicable for International Registration of Trade Marks in the light of convention (Madrid).” February 2025: a note on “Madrid Convention”. August 2024: a note on “filing of applications for international registration of marks under the Madrid Convention”. For the essay, sections 1 to 4, citing the sections of Chapter IVA; for the notes, the salient features and central attack. Mentioning that India joined only the Protocol, in 2013 through the 2010 amendment, is the detail that marks a careful answer.
Now try the real questions: Intellectual Property Rights I past question papers.