The Madrid System: Streamlining International Trademark Registration

Imagine you’ve built a brand in India and now want to protect it in the United States, Germany, Japan, and ten other countries. Without a centralized system, you’d have to hire local lawyers in each country, file separate applications in different languages, pay individual fees, and track dozens of deadlines – all simultaneously. That is exactly the problem the Madrid System was designed to solve. Governed by two foundational treaties – the Madrid Agreement of 1891 and the Protocol Relating to the Madrid Agreement of 1989 – this system gives trademark owners a single, centralized route to international brand protection.

The historical backdrop: why the Madrid System was created 🔗

Before the Madrid Agreement, trademark protection was purely territorial. A registration granted by one country protected a brand only within that country’s borders. Anyone wanting international protection had to navigate each country’s trademark office independently – different laws, different languages, different fees. The Agreement was established in 1891 specifically to eliminate this burden by creating a mechanism for a single and inexpensive international trademark registration.

Nine countries signed the original Agreement and formed what is now known as the Madrid Union. Over the following century, the system expanded, but it also revealed structural weaknesses – particularly the requirement that a mark first be registered (not just applied for) at the home office, and the risk of what is called a “central attack,” where cancellation of the home registration could wipe out all international registrations tied to it. Major trading nations like the United States, Japan, and the United Kingdom refused to join for precisely these reasons. This pushed WIPO to revisit the framework entirely.

The Madrid Protocol 1989: modernizing the system 🔗

The Protocol was adopted in 1989 and came into operation on April 1, 1996, as a separate treaty – not a mere amendment – designed to correct the Agreement’s deficiencies while preserving its core objective of simple, inexpensive international registration. Together, the Agreement and the Protocol are referred to collectively as the Madrid System.

Key improvements the Protocol introduced 🔗

The Protocol introduced several significant procedural reforms. First, it allowed applicants to base their international application on a pending trademark application in their home country – not just a finalized registration. This meant businesses could start the international process much earlier. Second, it extended the refusal period that national offices get (from 12 months under the Agreement to up to 18 months under the Protocol), giving trademark offices more time to conduct thorough examination. Third, it introduced an “individual fee” system, allowing member countries to charge fees closer to their actual national rates rather than being bound to a common lower tariff. This made the Protocol attractive to countries like the US, Japan, and the UK, which had stayed out of the Agreement. Fourth, it allowed intergovernmental organizations – like the European Union – to become contracting parties, significantly expanding the system’s geographic reach.

Since 2016, all international applications under the Madrid System are filed exclusively under the Protocol, even when member countries are party to both treaties. The Protocol has become the foundation of the modern Madrid System.

How the Madrid System works: the process explained 🔗

The process is structured around three stages, each involving a distinct actor: the applicant’s home office, WIPO’s International Bureau, and the trademark offices of the countries where protection is sought.

Stage 1: the basic mark and filing at the office of origin 🔗

Before using the Madrid System, an applicant must have an existing national trademark application or registration in their home country – called the basic mark. This basic mark forms the foundation of the entire international application. The international application is then filed through the applicant’s national IP office – the Office of Origin – using Form MM2. The Office of Origin checks the application for compliance with the basic mark’s details (the mark itself, goods and services, applicant information) before certifying and forwarding it to WIPO.

Stage 2: WIPO formal examination 🔗

WIPO conducts only a formal examination – it checks that the application is complete, correctly classified, and consistent with the basic mark. It does not assess the substantive registrability of the mark. If no issues are found, WIPO records the mark in the International Register, publishes it in the WIPO Gazette of International Marks, and notifies the IP offices of all designated member countries. The applicant receives a Certificate of International Trademark Registration.

Stage 3: national examination in designated countries 🔗

This is where national law takes over. Each designated country’s trademark office performs its own substantive examination based on domestic rules. Each IP office must grant or refuse protection within a set time limit – typically 12 months, or 18 months in some jurisdictions. A refusal by one country does not affect the outcome in others, so protection in the remaining designated countries remains intact even if one jurisdiction rejects the application.

Key features and advantages of the Madrid System 🔗

A single international application covers up to 132 countries, with one set of fees paid in Swiss francs. The application can be filed in English, French, or Spanish – eliminating the need for translations across dozens of jurisdictions. Post-registration management is equally simplified: changes in ownership, name, address, or scope of goods and services can all be recorded through WIPO in a single transaction that takes effect across all designated countries. Renewals, too, are handled centrally every ten years.

WIPO data shows that over 70,000 international trademark applications are filed through the Madrid System each year, with strong participation from technology, food, fashion, and e-commerce sectors. The 115 members of the Madrid Union represent more than 80% of world trade, making this system strategically indispensable for any brand with global ambitions.

Another useful feature is subsequent designation: after an international registration is granted, the trademark holder can add new countries to the portfolio at any time, without filing a fresh international application. This lets businesses expand market by market as they grow.

The five-year dependency rule and central attack risk 🔗

One important limitation to understand is the five-year dependency period. The international registration is dependent on the basic mark for five years from the date of international registration. If the home application or registration is cancelled, abandoned, or limited during this period, the international registration is cancelled to the same extent. This vulnerability – known as “central attack” – is why trademark owners must actively maintain their home registration during those critical five years. After the five-year mark, the international registration becomes independent of the basic mark.

The Protocol partially addressed this through a transformation provision: if the international registration is cancelled due to a central attack, the holder may convert it into individual national applications in each designated country, retaining the original filing date. This preserves priority rights even when the international registration collapses.

India and the Madrid System 🔗

India joined the Madrid Protocol with effect from July 8, 2013. Before this, Indian brand owners had to file separate trademark applications in every country they sought protection in – a process that was both expensive and administratively exhausting. India’s accession changed that fundamentally.

To align domestic law with the Protocol’s requirements, India enacted the Trade Marks (Amendment) Act, 2010, which inserted Chapter IVA (Sections 36A to 36G) into the Trade Marks Act, 1999. These sections govern the entire lifecycle of international applications originating from India and international registrations designating India. Specifically: Section 36A applies the Act’s provisions to Madrid Protocol applications; Section 36C designates the Trade Marks Registry as the Office of Origin; Section 36D governs applications originating from India; Section 36E handles cases where India has been designated by a foreign applicant; and Sections 36F and 36G deal with effects, duration, and renewal of international registrations.

An Indian applicant must be a citizen of India, domiciled in India, or have a real and effective industrial or commercial establishment in India. They must also own a basic mark – either a pending application or a registered trademark – with the Indian Trade Marks Registry. India has declared an 18-month refusal period, meaning that when a foreign applicant designates India, the Indian registry has 18 months to raise objections. The Indian registry serves dual roles: as the Office of Origin for Indian applicants, and as the designated office for foreign applicants seeking protection in India.

Limitations to keep in mind 🔗

The Madrid System is powerful but not without constraints. Coverage is limited to member countries – if your target market is not part of the Madrid Union, you must file directly in that country. Responding to refusals from national offices often requires engaging local counsel in the language of that jurisdiction, which adds cost and complexity. The five-year central attack risk, as discussed above, makes careful management of the home registration non-negotiable. And while the system reduces costs compared to filing individually in every country, fees can still accumulate significantly when a large number of countries are designated.

It is also important to note that an international registration is not a single global trademark. The Madrid System provides a centrally administered process for obtaining multiple registrations in separate jurisdictions – it does not create a single unified registration across all of them, the way the European Union trademark system does. Each country retains full authority to grant or deny protection under its own domestic law.

Why the Madrid System matters for Indian businesses and law students 🔗

For Indian businesses, especially startups and SMEs looking to scale globally, the Madrid System dramatically lowers the barrier to international trademark protection. Instead of coordinating with attorneys across fifteen countries, a brand owner in Mumbai can file one application with the Indian Trade Marks Registry and pursue protection across more than 130 jurisdictions simultaneously. For law students, the system is a masterclass in how international treaties interact with domestic IP law – the Protocol sets the procedural framework, but substantive questions of registrability remain anchored in national legislation. Understanding how Sections 36A to 36G of the Trade Marks Act, 1999 operationalize the Protocol’s requirements is essential for anyone practicing IP law in India.

What do you think? Given that the international registration depends on the basic mark for five years, how should Indian businesses strategically time their domestic and international trademark filings to minimize central attack risk? And with India’s growing number of globally recognized brands, do you think the current 18-month refusal period gives the Indian Trade Marks Registry adequate time to conduct meaningful examination of foreign designations?

References

1. https://www.wipo.int/wipolex/en/text/283530
2. https://www.wipo.int/wipolex/en/text/283484
3. https://www.nyulawglobal.org/globalex/International_Trademark_Law.html
4. https://en.wikipedia.org/wiki/Madrid_Protocol
5. https://ip-coster.com/academy/details/madrd_protocol_vs_madrid_agreement
6. https://www.wipo.int/en/web/madrid-system/how_to/file/basics
7. https://abipco.gov.ag/the-madrid-system/
8. https://www.wipo.int/en/web/madrid-system/journey-of-an-international-trademark-registration
9. https://www.wipo.int/en/web/madrid-system
10. https://marcabien.com/en/madrid-system-in-global-trademark-registration
11. https://www.dbllawyers.com/madrid-protocol/
12. https://ssrana.in/ip-laws/trademarks-in-india/madrid-protocol-india/
13. https://www.indiacode.nic.in/bitstream/123456789/15427/1/the_trade_marks_act,_1999.pdf
14. https://taxguru.in/corporate-law/international-trademark-registration-india-madrid-protocol.html
15. https://markshield.in/understanding-international-trademark-protection-under-the-madrid-protocol/