Understanding the Examination Process in Designated Parties under the Madrid System

When a brand decides to expand internationally and files an international trademark application through the Madrid System, the journey doesn’t end with WIPO registering the mark and issuing a certificate. That’s actually where a critical second phase begins – the examination by each designated contracting party’s own national office. This phase determines whether the trademark will actually receive protection in the countries chosen by the applicant, and understanding how it works is essential for anyone navigating international trademark law.

What happens after WIPO registers the mark
What national offices examine
Time limits for examination: 12 or 18 months
Provisional refusal: not the final word
How India handles examination of international registrations
Tacit acceptance: protection through silence
Effect of protection: equivalent to national registration
Withdrawal of refusal and its effect
Why this phase matters

What happens after WIPO registers the mark

Once WIPO formally registers the international application, it publishes the mark in the WIPO Gazette of International Marks, issues a certificate of registration, and then notifies the national IP offices of all the countries the applicant has designated. It’s important to understand that this registration by WIPO is purely a formality check – WIPO does not conduct any substantive examination and does not have the power to grant trademark protection in individual countries. That authority rests entirely with each designated national office.

Each designated office then conducts what is known as national examination – a full substantive review of the trademark application according to its own domestic trademark law. The fact that WIPO has registered the mark carries no presumption of acceptance at the national level. As James & Wells IP explains, an international registration produces the same effect as if a direct national application had been filed in each designated country – but protection must not be refused by the national office within a specified period for that effect to take hold.

What national offices examine

Each designated office reviews the trademark on the same grounds it would apply to a direct domestic application. The examination can result in refusal on several grounds, including:

Absolute grounds: The mark is generic, descriptive, laudatory, or lacks distinctiveness for the goods or services listed.
Relative grounds: The mark is identical or confusingly similar to an earlier registered trademark in that jurisdiction.
Specification issues: The description of goods and services does not comply with local requirements or classification norms.

Different countries weight these grounds differently. Some jurisdictions examine both absolute and relative grounds during examination itself, while countries with European legal traditions – such as the UK and many EU member states – focus primarily on absolute grounds during official examination and leave relative conflicts to be raised through third-party opposition proceedings.

Time limits for examination: 12 or 18 months

The Madrid System prescribes strict time limits within which a designated office must communicate any decision. According to WIPO, most designated contracting parties must issue any provisional refusal within 12 months from the date WIPO notifies them of the designation. However, member countries can declare that this period be extended to 18 months. Additionally, where a refusal is based on an opposition filed by a third party, it may be notified even after the 18-month period has lapsed, provided the member country has made the requisite declaration to WIPO in advance.

Provisional refusal: not the final word

If a designated office finds grounds for refusal, it must send a provisional refusal notification to WIPO, which then informs the trademark holder. This is called “provisional” because it is not a final decision – it is an objection that the applicant has the opportunity to contest. As Intepat IP explains, once a provisional refusal is issued, the applicant can respond and address the objections raised by the national office. All further exchanges happen directly between the applicant (or their local representative) and the national office – WIPO does not participate in this stage.

The provisional refusal can be total (covering all goods and services) or partial (covering only some of them). A partial refusal means the trademark may still receive protection in that country for the goods and services not objected to. Crucially, WIPO confirms that a refusal by one member country does not affect the international registration or protection in other designated countries – each designation is independent.

How India handles examination of international registrations

India acceded to the Madrid Protocol on April 8, 2013, with its provisions coming into force on July 8, 2013. When India is a designated country in an international application, the Trade Marks Registry (TMR) conducts the examination under the Trade Marks Act, 1999, specifically under Section 36E. The Registrar examines the application ordinarily within two months of receiving the advice from the International Bureau.

India has declared an 18-month examination window. Under Article 5(2)(b) of the Madrid Protocol, if the TMR finds grounds for refusal, it must notify WIPO with a provisional refusal before this period expires. Common grounds for provisional refusal in India include lack of distinctiveness under Section 9(1)(a) of the Trade Marks Act, 1999, and conflict with earlier marks under Section 11(1). If there are no grounds for refusal, the TMR advertises the mark in a separate part of the Trade Marks Journal, ordinarily within six months of receipt of WIPO’s notification.

Once a provisional refusal is issued and communicated by WIPO to the holder, the applicant has 30 days from the date of receipt to file a response. The applicant must engage a trademark agent or attorney with an address in India and execute a Power of Attorney in their favour. The TMR then considers the response, and if a hearing is required, a show cause hearing is scheduled before a designated officer. If the opposition proceedings are resolved in the applicant’s favour, or if no opposition is received within four months of publication, the mark is accepted and registered in India.

Tacit acceptance: protection through silence

One of the most strategically important principles in this phase is tacit acceptance. If a designated office does not communicate any provisional refusal to WIPO within the applicable time limit – 12 or 18 months – the mark is automatically deemed protected in that jurisdiction. As Novagraaf notes, if no objection is raised by the national trademark office within the fixed examination period, the application gains automatic protection. This creates legal certainty for trademark holders and also incentivises national offices to conduct timely examinations.

For example, if an applicant designates Germany in their international registration and the German Patent and Trade Mark Office (DPMA) does not issue a refusal within 18 months of notification, the trademark receives protection in Germany automatically – with the same legal standing as if it had been filed and registered directly with the DPMA.

Effect of protection: equivalent to national registration

Whether protection is granted through an express statement by the national office or through tacit acceptance, the legal effect is the same. As the USPTO explains, once the trademark office in a designated country grants protection, the mark is protected in that country just as if that office had directly registered a nationally filed application. The trademark holder enjoys the full bundle of rights available under the domestic law of that country – including the right to enforce the mark against infringers, license it, and rely on it in opposition proceedings.

This equivalence is the backbone of the Madrid System’s value proposition. A single international application, processed through WIPO, ultimately produces a set of nationally recognised trademark rights – each independently granted, each governed by domestic law, and each carrying the same force as a direct national registration.

Withdrawal of refusal and its effect

It is also possible for a designated office to withdraw a provisional refusal after it has been communicated. This can happen if the applicant’s response successfully addresses all the objections raised. Once a refusal is withdrawn – either entirely or in part – the mark is granted protection for those goods and services for which the refusal was lifted, again with the same effect as a direct national registration. WIPO’s process guide notes that if protection is eventually granted following a provisional refusal, a Statement of Grant of Protection is issued and recorded in the International Register.

Why this phase matters

The examination phase by designated offices reflects a fundamental balance the Madrid System is built on: international procedural efficiency paired with national substantive sovereignty. While the system streamlines filings, it does not override domestic trademark law. Every country retains full authority to apply its own standards, and applicants must be prepared to engage with each jurisdiction on its own terms.

For Indian students and practitioners, this means understanding that an international registration is not a guaranteed passport to protection. As observed by practitioners, an application filed through the Madrid route is examined first by the home country, then by WIPO for formal compliance, and finally by the trade mark office of the designated country – making it a multi-layered process. Preliminary research into each designated country’s requirements, likely objections, and opposition timelines is not just advisable – it is a strategic necessity.

What do you think? If a trademark passes examination without objection in one designated country but faces a provisional refusal in another, should the applicant prioritise defending the refusal or consider limiting the scope of goods and services to secure partial protection? And given India’s 18-month examination window and its high rate of provisional refusals, how should an Indian brand strategically approach the choice of designated countries when filing an international application through WIPO?

References

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Table of Contents

What happens after WIPO registers the mark 🔗

What national offices examine 🔗

Time limits for examination: 12 or 18 months 🔗

Provisional refusal: not the final word 🔗

How India handles examination of international registrations 🔗

Tacit acceptance: protection through silence 🔗

Effect of protection: equivalent to national registration 🔗

Withdrawal of refusal and its effect 🔗

Why this phase matters 🔗