International Trademark

International Trademark: complete guide

Introduction

A trademark registered in India protects your brand only in India. Trademark rights are territorial, which means that a registration in one country gives no rights in another. If you sell to overseas customers, export goods, list products on foreign marketplaces, license your brand to distributors abroad or plan to open offices in other countries, you need protection in each of those markets. Without it, someone else may register your brand first in a foreign country and block your entry, demand payment for the mark, or sell look-alike products under your name.

There are two main ways for an Indian business to protect a trademark abroad. The first is the Madrid System, an international registration system administered by the International Bureau of the World Intellectual Property Organization. India joined the Madrid Protocol in 2013. An Indian applicant with a pending application or a registration in India can file a single international application through the Indian Trade Marks Registry, as the office of origin, and designate several member countries and regional organisations at once, in one language, with one set of fees. The second way is to file national applications directly in each country, through local trademark attorneys, under that country's law.

Each route has advantages. The Madrid route is usually more economical and simpler to manage when several countries are involved, because renewals, changes of ownership and changes of address can be recorded centrally. A national filing may suit countries that are not Madrid members, cases where the Indian base mark is weak or likely to change, or markets where local examination practice makes a direct filing more practical. Many brands use a combination.

International filing involves decisions that are hard to undo: which countries to cover, how to word the list of goods and services so that it is accepted abroad, whether to claim priority from the Indian application, and how to manage provisional refusals issued by foreign offices. Our team plans the filing strategy with you, prepares and files the international application or coordinates national filings through associate attorneys abroad, and manages the matter through to protection in each country.

This page explains who should consider an international trademark, the legal framework, the step-by-step process under the Madrid System, the documents required, timelines, how our pricing works and the common mistakes to avoid.

Who Needs It

International trademark protection is relevant for any Indian business whose brand is used, or will be used, outside India. Typical applicants include:

• Exporters of goods such as textiles, spices, handicrafts, pharmaceuticals, engineering products and processed foods sold under their own brand.
• Direct-to-consumer brands that sell online to customers abroad or list products on foreign online marketplaces, many of which ask for a local trademark registration for brand protection programmes.
• Software, SaaS and app businesses whose product names and logos are visible to users worldwide.
• Franchise businesses expanding restaurants, salons, education centres or retail outlets to other countries.
• Manufacturers working with foreign distributors who want to make sure the brand stays in their own name rather than the distributor's.
• Startups preparing for international fundraising or acquisition, where investors expect the brand to be protected in key markets.
• Hospitality, travel and services businesses that market to international clients.
• Companies with overseas subsidiaries that need the group's marks protected in each country of operation.

Even if you do not plan to expand immediately, it may be worth protecting your brand in your most important future markets early, especially in countries where registration is granted to the first person to file.

Key Benefits

• Protection in each chosen country. A registration or protected designation gives you rights in that country under its law, including the right to act against infringers there.
• One application, many countries. Under the Madrid System, a single international application can designate multiple member countries, saving time and administrative effort.
• Central management. Renewals, changes in ownership, and changes in name or address of an international registration can be recorded centrally rather than country by country.
• Priority claim. Under the Paris Convention, an international or foreign application filed within six months of your first Indian application can claim the Indian filing date as its priority date.
• Stopping bad-faith registrations. Early filing reduces the risk of distributors, competitors or others registering your brand abroad.
• Support for online marketplace programmes. Many foreign marketplaces require a registered or pending local mark before giving brand owners access to brand protection tools.
• Asset value. A brand protected in several markets is more valuable in licensing, franchising and investment.

Madrid route or national filings: how to decide. The Madrid route works well when you want several Madrid member countries, your Indian base mark is stable, and your list of goods and services is consistent across markets. National filings are needed for countries outside the Madrid System, and may be preferable where the base mark faces objections in India or where you want different specifications in different countries. In practice, we often recommend a Madrid application for most countries along with national filings in a few others.

Dependency on the Indian base mark. For five years from the date of the international registration, its protection depends on the Indian base application or registration. If the Indian mark is refused, withdrawn, cancelled or limited during that period, the international registration is cancelled or limited to the same extent in all designated countries. This is sometimes called central attack. The holder can, within the time allowed, transform the cancelled designations into national applications that keep the original date, but this involves additional filings in each country. A strong Indian base mark is therefore important before filing under Madrid.

Eligibility and Legal Requirements

The main requirements for filing an international application from India under the Madrid Protocol, as implemented through the Trade Marks Act, 1999 and the Trade Marks Rules, 2017, are:

• Connection with India. The applicant must be an Indian national, be domiciled in India, or have a real and effective industrial or commercial establishment in India.
• Indian base mark. The applicant must have a trademark application filed in India or a registered trademark in India. The international application must be for the same mark, and the goods and services must be covered by the base application or registration.
• Same applicant. The applicant of the international application must be the same as the applicant or proprietor of the Indian base mark.
• Form and office of origin. The international application is filed in the prescribed form through the Indian Trade Marks Registry, which certifies the particulars and forwards it to the International Bureau.
• Designated countries. Only members of the Madrid Protocol can be designated. For non-members, national applications must be filed separately in each country.
• Language and classification. The application is filed in English, with goods and services classified under the Nice Classification.
• Fees. International fees consist of a basic fee, plus individual or complementary fees for each designated country, payable to the International Bureau. A handling fee is payable to the Indian Registry. All government and official fees are charged at actual.
• Examination in each country. After the International Bureau checks formalities and records the mark in the International Register, each designated office examines it under its own law. Under the Protocol, an office can issue a provisional refusal within twelve months, or eighteen months if it has made the relevant declaration, with a possible longer period where an opposition is involved.
• Term and renewal. An international registration lasts ten years and can be renewed for further periods of ten years.
• National filings. For direct national filings, the rules of each country apply, including requirements about local agents, powers of attorney, proof of use and translations.

International rules, the list of Madrid members and the declarations made by individual countries change from time to time. We check the current position for each country at the time of filing.

Step-by-Step Guide

1. Business and market review. We discuss where you sell now, where you plan to sell, your distribution model and your timelines, so the list of countries reflects real commercial needs.
2. Review of the Indian base mark. We check the status and strength of your Indian application or registration, its list of goods and services, and any pending objections or oppositions that could affect the international filing.
3. Clearance searches abroad. For important markets, we arrange searches of the local trademark registers, either directly or through associate attorneys, to identify conflicting marks before filing.
4. Choosing the route. We recommend Madrid designations, national filings or a combination, and advise on whether a priority claim is still available.
5. Drafting the specification. We prepare a list of goods and services that is covered by the base mark and worded in a way that foreign offices are likely to accept, using standard Nice Classification terms where possible.
6. Preparing the international application. We prepare the international application form with applicant details, the mark, the base mark details, the classes, the list of goods and services and the designated countries, along with any country-specific declarations, such as a declaration of intention to use the mark where a designated country requires it.
7. Filing through the Indian Registry. We file the application with the Indian Trade Marks Registry and pay the handling fee and the international fees at actual. The Registry certifies the application and forwards it to the International Bureau.
8. International registration. The International Bureau examines the formalities. If they are in order, the mark is recorded in the International Register, published, and a certificate of international registration is issued. Designated offices are notified.
9. Handling provisional refusals. If any designated office issues a provisional refusal or an opposition is filed, we coordinate the response through a local attorney in that country within the time allowed under its law.
10. Statement of grant and ongoing management. Once each office grants protection, it sends a statement of grant. We track the status of each designation, maintain a portfolio record, and handle renewals, assignments and changes through the international register.

Documents Checklist

For all applicants:

• Details of the Indian base application or registration, including the application number, mark and classes
• A clear image of the mark, in the same form as the Indian base mark
• List of countries where protection is needed
• Description of the goods and services you sell or plan to sell in each country
• Signed authorisation or power of attorney for our team

For an individual or sole proprietor:

• Identity proof and address
• Proof of domicile or business establishment in India

For a company, LLP or firm:

• Certificate of incorporation or registration, or partnership deed
• Board resolution or authority letter for the signatory
• Registered office details in India

For priority claims:

• Filing receipt of the Indian application and its filing date

For national filings in specific countries:

• Country-specific powers of attorney, which may need notarisation or legalisation
• Translations of documents where required
• Evidence of use or a declaration of intention to use, where the country requires it

How Long It Takes

• Strategy and preparation: usually one to two weeks, including review of the base mark and the country list. Foreign clearance searches can add time.
• Indian Registry certification and transmission: the Registry certifies the application and forwards it to the International Bureau, normally within a few weeks of filing.
• International registration: the International Bureau records the mark and issues a certificate once formalities are complete. If there are irregularities, they must be corrected within the time allowed.
• National examination: each designated office has twelve or eighteen months from notification to issue a provisional refusal, with longer periods possible in opposition cases. Many countries complete examination sooner.
• Direct national filings: timelines vary greatly by country, from several months to a few years.

Overall, protection in most designated countries is usually settled within twelve to twenty-four months, though contested cases take longer.

Pricing

Pricing for international trademark protection is custom, because the work and cost depend on the countries chosen and the route taken. We prepare a quote after reviewing your base mark, country list and specification.

The main factors are:

• The number of countries designated under the Madrid System
• Whether national filings are needed in countries outside the Madrid System
• The number of classes covered
• Whether foreign clearance searches are needed
• The likelihood of provisional refusals in particular countries and the associated local attorney costs

Our quote sets out our professional fee for strategy, preparation, filing and management, and separately estimates the official fees. All official fees, including the Indian Registry handling fee, the international basic fee and individual or complementary fees for each country, are charged at actual. Responses to provisional refusals and oppositions abroad, which involve local attorneys, are quoted at the time they arise.

Common Mistakes to Avoid

• Filing on a weak base mark. If the Indian mark is refused or limited in the first five years, the international registration falls with it, subject to transformation.
• Choosing countries without a plan. Designating too many countries wastes fees, while leaving out key markets leaves gaps. Link the list to real business plans.
• Using a broad or vague specification. Many foreign offices object to general terms. Precise wording reduces refusals.
• Missing the priority deadline. The six-month priority window from your Indian filing date cannot be extended.
• Assuming one country's approval applies elsewhere. Each designated office examines the mark under its own law and can refuse it independently.
• Ignoring use requirements. Some countries require a declaration of intention to use or proof of use, and registrations in some countries can be cancelled for non-use.
• Letting distributors register your brand. Make sure contracts with foreign distributors confirm that the brand belongs to you, and file before you appoint them where possible.
• Not tracking deadlines. Provisional refusals abroad have strict reply deadlines. Missed deadlines usually mean loss of protection in that country.

What Happens After

• Track each designation. Keep a record of the status of each country, including grants, refusals and deadlines.
• Use the mark in each market. Use supports protection and is required for maintaining registration in some countries.
• Renew on time. International registrations are renewed every ten years through the international register. National registrations follow the renewal rules of each country.
• Record changes centrally. Changes in ownership, name or address can be recorded with the International Bureau for all designated countries.
• Add countries later. You can extend an existing international registration to additional Madrid countries through a subsequent designation.
• Monitor and enforce. Watch for conflicting filings and infringing use abroad, and act through local counsel when needed.
• Keep the Indian base mark strong during the five-year dependency period, including responding promptly to any objection or opposition in India.

Our team can manage your international portfolio, coordinate with associate attorneys abroad and handle subsequent designations and renewals.

FAQs

Is there a single worldwide trademark registration?

No. There is no single global registration. The Madrid System allows one international application to cover many member countries, but protection is granted country by country under each country's law.

Do I need an Indian trademark before filing under the Madrid System?

Yes. An Indian applicant must have an Indian trademark application or registration for the same mark, which acts as the base mark for the international application.

What is central attack?

For five years from the international registration date, if the Indian base mark is refused, cancelled or limited, the international registration is cancelled or limited to the same extent in all designated countries. The holder can then transform it into national applications within the time allowed.

Can I add more countries later?

Yes. Additional Madrid member countries can be added later through a subsequent designation, without filing a fresh international application.

What if a country I need is not a Madrid member?

You need to file a national application directly in that country through a local trademark attorney. We coordinate these filings for you.

Can I claim the Indian filing date abroad?

Yes, if the international or foreign application is filed within six months of your first Indian filing, under the priority rules of the Paris Convention.

How long does an international registration last?

Ten years from the date of international registration, renewable for further ten-year periods. National registrations follow the term set by each country.

What is a provisional refusal?

It is a notice from a designated country's office that it cannot grant protection on the basis of its examination or an opposition. The applicant can respond under that country's procedure, usually through a local attorney.

Is the Madrid route always cheaper?

It is often more economical when several countries are involved, but not always. For one or two countries, or where specific local issues exist, national filings may be comparable or more practical. We compare both in our quote.

Do I need to use the mark in each country?

Rules vary. Some countries require a declaration of intention to use at filing, and many allow cancellation of registrations not used for a set period. We advise on the requirements for each country.

Can a foreign distributor register my brand in its own name?

It can try, and in some countries it may succeed if it files first. Registering your mark early and having clear distribution agreements helps protect you.

Can the list of goods and services differ between countries?

Under the Madrid System, the list for each designated country must fall within the base mark's list, but it can be limited for particular countries. National filings can be drafted separately for each country.

What official fees apply?

The International Bureau charges a basic fee and fees for each designated country, and the Indian Registry charges a handling fee. These are charged at actual and are set out in our quote.

Related Trademark & IP services

• Logo Design
• Patent Infringement
• Permanent Patent
• Provisional Application