International Trademark Registration: Step-by-step Guide
Nowadays, a lot of companies regularly expand outside of their domestic markets. It is crucial to safeguard a brand’s trademark when it enters new markets. A company may face dangers like infringement, counterfeiting, or losing its brand identity if it lacks international protection.
By registering an international trademark, businesses can use a more straightforward procedure to protect their brand across multiple nations. At Legismith LLP, we regularly assist companies and innovators in comprehending the workings of international trademark protection and how it can support the creation of a long-term brand strategy.
This article explains the Madrid Protocol system, the concept of international trademark registration, who is eligible to apply, the registration process, the associated costs, and how to renew a trademark.
What is International Trademark?
A trademark that is protected in multiple nations through formal legal procedures is known as an international trademark. But it’s crucial to understand that there isn’t just one worldwide trademark. Since trademark rights are restricted to certain regions, you must obtain protection in each nation where you wish to have them.
The Madrid System, which is run by the World Intellectual Property Organization (WIPO), allows applicants to submit a single application that can cover multiple countries in order to facilitate this process.
Making use of this system
- You file one application.
- You select the countries where protection is required.
- Each designated country examines the trademark under its own national law.
If it is accepted, the trademark will be protected in that nation in the same manner as if it had been submitted directly to that national office.
For readers unfamiliar with domestic filing procedures, you may first review the Trademark Registration in India guide:
https://legismith.com/trademark-registration-in-india
How To Get International Trademark?
Applying for a trademark in your home country is usually the first step towards obtaining international trademark protection. This entails filing an application with the Indian Trade Marks Registry in India.
You can use the Madrid System to seek international protection after completing a national application or registration. Typically, the procedure entails:
- Filing or owning a basic trademark application in India.
- Choosing countries where protection is needed.
- Filing an international application through the Indian office.
- WIPO examination and publication.
- National examination in designated countries.
Each designated jurisdiction independently decides whether to grant protection.
Eligibility for International Trademark
To apply for international trademark registration under the Madrid System, you must have a connection with a member country. This connection may arise through:
- Citizenship
- Residence
- A real and effective commercial establishment
This link is typically generated for Indian applicants by filing a trademark application with the Indian Trade Marks Registry.
Furthermore, the international application needs to be identical to the home country’s basic trademark. International mentions of goods and services are limited to what is covered by the primary application.
International Trademark Association
Numerous international organizations support policy development and trademark protection. Among them, the most prominent ones are:
World Intellectual Property Organization (WIPO) – administers the Madrid System and international IP treaties.
International Trademark Association (INTA) – a global association of trademark professionals that promotes effective trademark protection worldwide.
These groups seek to increase awareness of intellectual property rights, foster cooperation between various fields, and standardize practices.
Madrid Protocol for International Trademark Registration
The most widely used international trademark registration system is the Madrid Protocol. India joined in 2013, enabling Indian businesses to use the Indian Trade Marks Registry to submit international trademark applications.
Key features of the Madrid Protocol include:
- One international application for multiple countries
- Filing in one language (English, French, or Spanish)
- Centralised fee payment
- Centralised renewal process
- Ability to add new countries later (subsequent designation)
Despite these advantages, each designated country still applies its own trademark laws when examining the application.
Official resources for the Madrid System can be accessed on the WIPO website:
https://www.wipo.int/madrid/en/
International Trademark Classes
Trademark applications classify goods and services according to the Nice Classification system. This system divides products and services into 45 classes:
- Classes 1–34: Goods
- Classes 35–45: Services
Correct classification is essential because trademark protection applies only to the specified goods or services.
If you want to understand how this classification system works in India, see:
https://legismith.com/nice-classification-trademark-registration-in-india/
International Trademark Registration Process
The international trademark registration process under the Madrid System typically follows several stages.
1. Conduct a trademark search
Before filing, you should verify that your trademark is not identical or confusingly similar to an existing mark.
The Indian Trade Marks Registry provides a public search tool:
https://tmrsearch.ipindia.gov.in/tmrpublicsearch/frmmain.aspx
A proper search helps reduce the risk of objections or refusal.
2. File a national trademark application
You must first file a trademark application with the Indian Trade Marks Registry. This national filing becomes the basic application for the international registration.
More details about the domestic procedure can be found here:
https://legismith.com/trademark-registration-process-in-india/
3. Select the countries for protection
Applicants must designate the countries where protection is required. These countries must be members of the Madrid Protocol.
Businesses typically choose jurisdictions where they:
- Manufacture products
- Sell goods or services
- Plan future expansion
4. Submit the international application (Form MM2)
The international application is filed through the Indian Trade Marks Registry using Form MM2.
The office verifies the details and forwards the application to WIPO.
5. WIPO examination and publication
WIPO examines the application for:
- Formal compliance
- Fee payment
- Accuracy of details
If the application meets the requirements, WIPO records it in the International Register and publishes it in the WIPO Gazette of International Marks.
6. Examination by designated countries
Each country examines the trademark according to its own trademark laws.
Designated offices usually have 12–18 months to issue objections or refusals.
If no refusal is issued within this period, the trademark is considered protected in that jurisdiction.
7. Registration decision
Each country may:
- Grant protection
- Request clarification or amendments
- Refuse protection
If granted, the trademark enjoys the same legal status as a national registration in that country.
8. Monitoring and enforcement
After registration, businesses should monitor markets for potential infringement and maintain their trademark rights through renewal.
International Trademark Registration Fees
International trademark fees consist of several components.
1. Basic fee
Paid to WIPO for filing the international application.
2. Complementary or individual fees
Each designated country charges additional fees depending on its national rules.
3. Handling fee
A fee payable to the Office of Origin (for example, the Indian Trade Marks Registry).
Applicants can estimate fees using the official WIPO calculator:
https://madrid.wipo.int/feecalcapp/
Because fees vary based on:
- Number of countries
- Number of classes
- Individual country charges
The final cost differs from case to case.
International Trademark Infringement Case
Lacoste vs Crocodile
Even with international protection, trademark disputes can arise across jurisdictions.
A recent example is the Lacoste vs Crocodile International case. The dispute began in 2001, when Lacoste alleged that Crocodile International’s logo infringed its well-known crocodile emblem.
Key developments included:
- August 2024: A single-judge bench of the Delhi High Court ruled in favour of Lacoste.
- March 2026: A Division Bench upheld the injunction preventing Crocodile International from using the disputed logo.
The court concluded that the competing logo was too similar to Lacoste’s registered trademark and violated its copyright as well.
This case illustrates the importance of securing trademark protection and enforcing rights in each jurisdiction.
Benefits of International Trademark Registration
International trademark registration offers several advantages for businesses expanding globally.
Simplified filing
The Madrid System allows you to file one application instead of separate filings in each country.
Centralised management
Changes such as renewal, ownership transfer, or address updates can be handled through a single system.
Strategic expansion
Businesses can later add new countries through subsequent designation as markets grow.
Brand protection
International protection helps prevent unauthorised use, counterfeiting, and brand dilution.
Renewal of International Trademark Registration
International trademark registrations remain valid for 10 years from the date of registration.
They can be renewed indefinitely for additional 10-year periods by paying the prescribed renewal fees through WIPO.
However, during the first five years, the international registration depends on the basic national application. If the basic mark is cancelled within this period, the international registration may also be affected.
Regular monitoring and timely renewal help maintain protection across all designated countries.
FAQs
Can one trademark protect a brand worldwide?
No. Trademark rights are territorial. International systems like the Madrid Protocol simplify filing but protection still depends on each country’s approval.
How long does international trademark registration take?
The timeline varies by jurisdiction. Designated countries typically have 12–18 months to examine the application.
Can new countries be added later?
Yes. The Madrid System allows applicants to extend protection to additional member countries through subsequent designation.
Is international trademark registration permanent?
No. Protection lasts 10 years and must be renewed periodically.
Final Thoughts
Through a streamlined filing process, international trademark registration helps companies protect their brands across multiple markets. Applicants can manage international trademark portfolios more efficiently while adhering to the laws of each selected nation by utilizing the Madrid Protocol.
Maintaining trademark protection over time requires understanding the eligibility requirements, filing procedures, costs, and renewal obligations. A well-considered trademark strategy can be crucial for protecting brand identity in various nations as international trade expands.
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Disclaimer
The content provided in this article is for general informational purposes only and does not constitute legal advice. Please consult with a qualified IP attorney for your specific needs.