Navigating the International Application Process under the Madrid System

When a business wants to protect its trademark beyond its home country, filing separate applications in every target market can be expensive, time-consuming, and administratively overwhelming. The Madrid System, administered by the World Intellectual Property Organization (WIPO), solves this problem through a single, centralized international application process. For Indian businesses and legal professionals, understanding how this application works – from the basic mark requirement to fee structures – is essential knowledge in today’s increasingly globalized market.

What is the international application under the Madrid System? 🔗

The international application is the formal mechanism through which a trademark owner seeks protection in multiple countries simultaneously, using one application, one language, and one set of fees. Rather than dealing with each national trademark office separately, the applicant channels everything through WIPO’s International Bureau. The result, if successful, is an international registration that functions as a bundle of national protections in each designated country.

It is important to note, however, that there is no such thing as a single “global trademark.” What the Madrid System creates is a coordinated set of national rights, managed centrally. Each designated country retains the authority to grant or refuse protection based on its own domestic trademark law.

The basic mark: the mandatory starting point 🔗

Before filing an international application, an applicant must have a basic mark – either a registered trademark or a pending application – in their home country’s intellectual property office, referred to as the Office of Origin. This is a non-negotiable prerequisite. You cannot file an international application without this foundation.

For Indian applicants, the Office of Origin is the Trade Marks Registry under the Controller General of Patents, Designs and Trade Marks (CGPDTM). The Indian Trademark Office verifies that the international application matches the details of the basic mark – including the representation of the mark, the goods and services listed, and any colour claim – before certifying and forwarding it to WIPO.

A critical rule applies here: the international application cannot cover goods or services broader than those in the basic mark. It can be narrower, but never wider. So, if a company’s Indian trademark covers only clothing under Class 25, the international application cannot suddenly claim protection for footwear and headgear unless those were also part of the basic registration.

Additionally, the mark in the international application must be identical to the basic mark. Any variation – even in colour claim or stylization – can lead to rejection. This identity requirement is strictly enforced by WIPO during formal examination.

The five-step filing process 🔗

The international application process follows a structured sequence:

Step 1 – Prepare the application: The applicant completes the international application, primarily through WIPO’s digital platform called eMadrid. The application form used is Form MM2. It must include full applicant details, a representation of the mark, the list of goods and services classified under the Nice Classification, the designated countries where protection is sought, and proof of the basic mark.

Step 2 – Submit to the Office of Origin: The completed application is not sent directly to WIPO. It must first go to the applicant’s Office of Origin – in India’s case, the Trade Marks Registry. The Office checks whether the application corresponds to the basic mark and certifies it. The Indian IPO also charges a handling fee of INR 5,000 at this stage.

Step 3 – WIPO’s formal examination: Once WIPO receives the certified application, it conducts a formal (not substantive) examination. This means WIPO checks only procedural compliance – correct contact details, designation of at least one member country, adequate image quality, payment of fees, and so on. If there are issues, WIPO issues an irregularity notice, typically giving three months to rectify the problem.

Step 4 – Registration and publication: If the application passes formal examination, WIPO registers the mark in the International Register and publishes it in the WIPO Gazette of International Marks. A Certificate of Registration is issued to the applicant. Crucially, this registration does not automatically mean protection in the designated countries – it only confirms compliance with WIPO’s formal requirements.

Step 5 – Substantive examination by designated offices: WIPO notifies each designated member country of the international registration. Each national office then conducts its own substantive examination under its domestic law. They must either grant protection or issue a provisional refusal within 12 or 18 months (depending on the member’s declaration). If no refusal is communicated within this period, the trademark is deemed protected in that country.

Designating countries: choosing where you want protection 🔗

One of the most strategically important decisions in the international application is the selection of designated Contracting Parties – the countries where trademark protection is sought. The Madrid System currently covers 132 countries across its 116 members, representing more than 80% of world trade.

An applicant can designate any number of member countries, except the country of the Office of Origin. So an Indian company filing through the Indian Trade Marks Registry cannot designate India in the international application – India is already the basis of the filing. Any other member country, from the United States to Japan to Germany, can be designated.

Designations can also be made at a later date – known as subsequent designations – if a business wants to expand its geographic protection after the initial registration. This flexibility is one of the Madrid System’s most practical advantages, allowing companies to grow their trademark portfolio in step with their business expansion.

The Nice Classification: categorising goods and services 🔗

Every international application must classify goods and services according to the Nice Classification (NCL), an international system established by the Nice Agreement of 1957 and administered by WIPO. The classification currently spans 45 classes – Classes 1 to 34 cover goods, and Classes 35 to 45 cover services.

India follows the Nice Classification through the CGPDTM, which applies it to all domestic trademark filings as well. This means Indian applicants are already working within this framework when they register locally, making the transition to an international application relatively seamless in terms of classification.

During WIPO’s formal examination, it verifies that goods and services are correctly placed within the appropriate Nice classes. The list of goods and services in the international application cannot be broader than what is covered in the basic mark. WIPO’s eMadrid platform offers a Goods and Services Manager with pre-approved terms, which helps applicants avoid irregularity notices and provisional refusals caused by incorrect or ambiguous terminology.

Choosing the right classes matters not just for legal protection, but also for cost, since fees under the Madrid System are partly class-dependent.

Fee structure: what does it cost? 🔗

All Madrid System fees are paid in Swiss francs (CHF) and go directly to WIPO. The fee structure has three main components:

Basic fee: This mandatory fee applies to all applications. For Indian applicants, it is CHF 653 for a black-and-white mark and CHF 903 for a colour mark. The basic fee covers the first three classes of goods or services.

Supplementary fee: A supplementary fee of CHF 100 is charged for each class of goods or services beyond three. So, a trademark covering five classes would attract a supplementary fee for the two additional classes.

Complementary fee / Individual fee: For each designated Contracting Party that does not charge its own individual fee, a complementary fee of CHF 100 applies. However, many countries – including major markets like the United States, Japan, and China – have opted out of this standard structure and instead charge their own individual fees, which can be substantially higher. These individual fees are set by each country and must be researched separately before finalising the designation list.

WIPO provides a fee calculator through eMadrid, which applicants can use to estimate total costs based on the number of countries designated and classes claimed. This tool is highly recommended before filing, as costs can vary significantly depending on the target markets selected.

The dependency period and central attack risk 🔗

A lesser-known but critically important aspect of the international application is the five-year dependency rule. For five years from the date of international registration, the international trademark is directly tied to the basic mark. If the basic mark in the home country is refused, cancelled, withdrawn, or limited during this period, the international registration is automatically cancelled to the same extent – a scenario known as central attack.

This is a significant vulnerability for applicants. If the basic application or registration ceases to have effect within five years, it is possible to convert the international registration into separate national applications – a process called “transformation” – which preserves the original filing date. However, this can end up being more expensive than filing nationally from the outset. After the five-year period, the international registration becomes independent of the basic mark.

Why the Madrid System is a practical choice for Indian businesses 🔗

For Indian companies expanding internationally, the Madrid System offers a clear, cost-effective pathway to multi-country trademark protection without the administrative burden of managing separate filings in each jurisdiction. The ability to file in one language (English, French, or Spanish), pay one set of fees, and track all registrations through a single platform significantly reduces the complexity and cost of building a global trademark portfolio.

The system also simplifies post-registration management. Changes such as assignment of ownership, change of name or address, or renewal can all be recorded centrally through WIPO rather than filing separately in each designated country. Renewals are due every ten years and can be completed directly with WIPO. This centralized management is particularly advantageous for businesses holding trademark rights across many jurisdictions simultaneously.

That said, the Madrid System is not without its challenges. Provisional refusals from designated offices, tight response deadlines, and the central attack risk during the first five years all require careful planning and, ideally, professional legal guidance – especially when targeting markets with strict or complex trademark examination practices.

What do you think? If an Indian startup wants to protect its brand in five countries across Asia and Europe, how should it weigh the cost benefits of the Madrid System against the risk of central attack during the five-year dependency period? And given that each designated country conducts its own substantive examination, how much does the Madrid System actually simplify the path to genuine trademark protection in those markets?

References

1. https://www.wipo.int/en/web/madrid-system
2. https://www.dbllawyers.com/madrid-protocol/
3. https://www.intepat.com/blog/madrid-protocol
4. https://www.wipo.int/en/web/madrid-system/how_to/file/basics
5. https://ssrana.in/ufaqs/cost-filing-international-application-madrid-protocol/
6. https://www.wipo.int/en/web/classification-nice
7. https://www.wipo.int/en/web/madrid-system/how_to/file/madrid-system-filing-international-trademark-applications-classification-of-goods-and-services
8. https://www.wipo.int/en/web/madrid-system/how_to/file/fees
9. https://www.mewburn.com/law-practice-library/madrid-system-the-basics