Eligibility Criteria for Utilizing the Madrid System for International Trademark Protection

When an Indian startup dreams of taking its brand global, the first question isn’t “which countries should I protect in?” – it’s “am I even eligible to use the international trademark system?” The Madrid System, administered by the World Intellectual Property Organization (WIPO), is the most efficient route to securing trademark protection across multiple countries through a single application. But access to this system isn’t open to everyone. The Madrid Protocol sets out specific eligibility criteria, and understanding them is the essential first step before any international filing strategy takes shape.

What is the Madrid System and who controls access to it? 🔗

The Madrid System provides a centralized framework for securing trademark protection in the 132 countries that make up the Madrid Union. According to WIPO, you can file a single international application – in one language, with one set of fees – and seek protection in all or any of these member countries simultaneously. The system is governed by two treaties: the Madrid Agreement (1891) and the Madrid Protocol (1989), with the Protocol now effectively governing all international applications given its broader membership and more applicant-friendly terms.

But the system is deliberately not open-ended. As trademark practitioners note, access is restricted to natural persons or legal entities who meet a specific qualifying connection to a Madrid Union member. This gatekeeping serves a clear purpose – it ensures that only those with a genuine stake in member territories can leverage the system, preserving its integrity.

The three qualifying connections 🔗

To use the Madrid System, an applicant must establish one of three types of connections to a member country of the Madrid Union. These are: nationality, domicile, or a real and effective industrial or commercial establishment. Meeting any one of these three criteria is sufficient – an applicant does not need to satisfy all three.

Nationality 🔗

The most straightforward qualifying connection is citizenship. If you are a citizen of a country that is a member of the Madrid Union, you automatically qualify. For Indian applicants, this is the simplest threshold to meet – Indian nationals are eligible to file international applications using India as their Office of Origin, since India joined the Madrid Protocol in 2013.

Nationality covers both individuals and corporations registered in a member country. A company incorporated under Indian law, for instance, qualifies as a national of India for this purpose.

Domicile 🔗

Legal domicile in a Madrid Union member country also qualifies an applicant. Domicile here refers to a permanent legal residence – not a temporary stay or a mailing address. For individuals, this means a fixed, habitual place of abode in a member country. For businesses, it generally refers to the principal place of business or registered office. A foreign national who maintains legal domicile in India, for example, could use India as their Office of Origin even if they are not an Indian citizen.

Real and effective industrial or commercial establishment 🔗

This third qualifying connection is the most nuanced – and the most legally significant for businesses operating across borders. The establishment must be “real and effective,” meaning that simply having a nominal presence or paper companies won’t suffice. The applicant must be conducting substantial business or commercial activities in the member country.

Critically, the establishment does not necessarily require a physical storefront or office. What matters is whether genuine commercial activity is being carried out. A manufacturing unit, a distribution centre, or a regional headquarters – all of these can count. But a registered address used only for mail correspondence, with no actual operations, would not qualify. The legitimacy of the establishment can be subject to examination by WIPO or by the offices of designated countries, so applicants must be prepared to substantiate this claim if challenged.

Multiple qualifying connections: choosing your Office of Origin 🔗

An applicant may have qualifying connections to more than one Madrid Union member simultaneously. For example, an Indian national who is domiciled in Germany and also operates a manufacturing facility in Japan potentially has three separate qualifying connections. In such cases, the applicant may choose any one of those members as their Office of Origin, provided they also have a basic mark – a pending application or registration – in that jurisdiction.

This flexibility can be strategically important. The choice of Office of Origin affects things like the time limit designated countries have to examine the international application (12 or 18 months), the currency of fees, and the languages available for filing. For Indian businesses with global operations, it may sometimes be advantageous to file through a different Office of Origin if that jurisdiction offers procedural benefits – though the Office chosen must genuinely correspond to one of the applicant’s qualifying connections.

The basic mark requirement: a prerequisite tied to eligibility 🔗

Eligibility alone does not complete the picture. Before filing an international application, the applicant must already have – or have applied for – a national trademark registration in the member country serving as their Office of Origin. This is called the basic mark. The basic mark forms the foundation of the international trademark registration.

For Indian applicants filing through India as the Office of Origin, this means having a pending or registered trademark application before the Trade Marks Registry under the Controller General of Patents, Designs and Trademarks (CGPDTM). The international application must be for an identical mark, covering the same or a narrower list of goods and services as the basic mark. Any discrepancy between the two will result in a deficiency notice.

The basic mark also matters beyond the filing stage. The international registration remains dependent on the basic mark for a period of five years from the date of international registration. If the basic mark is cancelled, withdrawn, or lapses during this window, the international registration also falls – an event known as a “central attack.” This dependency makes the strength and stability of the basic mark a critical strategic consideration.

What “real and effective” means in practice 🔗

For many Indian businesses – particularly startups and SMEs exploring global markets – the “real and effective establishment” criterion deserves careful attention. The system is designed to prevent abuse through shell entities or paper companies set up purely to gain access to the Madrid route.

WIPO and national trademark offices retain the right to verify the genuineness of an establishment claim. Indicators that support a valid claim include a physical place of business, local employees, active contracts with suppliers or clients in that country, tax registrations, and regular commercial transactions. An Indian company that has set up a legitimate subsidiary in Germany – with local staff and actual business operations – can use Germany as its Office of Origin even if the parent company is Indian.

However, it is equally important to note that this establishment must be in a member country of the Madrid Union. For example, in many Latin American countries that are not part of the Madrid System, businesses located exclusively there cannot use those countries as a basis for international filings, regardless of how substantial their operations are.

How the criteria apply specifically to Indian applicants 🔗

India became a member of the Madrid Protocol on 8 July 2013, and since then the Trade Marks Registry (TMR) under the CGPDTM has served as India’s Office of Origin for outbound international applications. An Indian applicant must be a national of India, be domiciled in India, or have a real and effective establishment here, and must also have an active basic mark application or registration with the CGPDTM.

For inbound applications – where foreign applicants designate India for protection – the TMR examines those marks under the Trade Marks Act, 1999, and has 18 months from receiving notification from WIPO to issue a provisional refusal if necessary. Foreign applicants whose marks are designated in India must route any objection responses through an Indian representative – either a registered trademark agent, advocate, or company secretary – authorised by a Power of Attorney.

Why these criteria matter beyond paperwork 🔗

The eligibility criteria are not bureaucratic formality. They reflect the foundational principle underlying the Madrid System: that only those with a genuine connection to member territories should be able to access a mechanism designed to extend trademark rights across those same territories. Allowing entities without any real connection would undermine both the integrity of the system and the interests of trademark offices and brand owners who rely on it.

For students of intellectual property law, understanding these criteria also illuminates the broader architecture of international IP law – specifically how multilateral systems use membership and qualifying conditions to balance accessibility with accountability. The Madrid System’s eligibility rules are a practical example of how international treaties translate abstract principles of territorial sovereignty and genuine commercial connection into workable legal criteria.

What do you think? If a foreign national has a real and effective business establishment in India but holds citizenship in a country that is not a member of the Madrid Union, should India alone be sufficient to establish eligibility? And how should the threshold of “real and effective” be interpreted differently for digital-first businesses that operate without a fixed physical location in any single country?

References

1. https://www.wipo.int/en/web/madrid-system
2. https://www.wipo.int/en/web/madrid-system/how_to/file/index
3. https://abg-ip.com/registering-international-trademarks-madrid-system/
4. https://harris-sliwoski.com/chinalawblog/international-trademark-registration-a-step-by-step-guide-to-the-madrid-system-2025/
5. https://ssrana.in/ip-laws/trademarks-in-india/madrid-protocol-india/
6. https://trademarkfactory.com/madrid-system-requirements-for-international-trademark-registration
7. https://www.hindles.co.uk/faq/introduction-to-the-madrid-protocol-for-trade-mark-registration
8. https://ipindia.gov.in/writereaddata/portal/ipoguidelinesmanuals/1_93_1_the_madrid_protocol.pdf
9. https://filings.ae/guides/madrid-system-for-international-trademark-registration
10. https://www.quickcompany.in/articles/international-trademark-registration
11. https://www.wipo.int/edocs/mdocs/madrid/en/wipo_webinar_madrid_2024_35/wipo_webinar_madrid_2024_35_presentation.pdf