You've spent months building your brand, finalised the logo, and completed your trademark registration in India. Now you're planning to sell your products in the Middle East, Europe, or Southeast Asia. The question that naturally follows is whether your Indian trademark validity extends to these foreign markets. The short answer is no. A trademark registered in India protects your brand only within Indian territory. It doesn't automatically grant you rights in any other country.
This comes as a surprise to many Indian entrepreneurs, particularly those who assume that registration with the Controller General of Patents, Designs and Trade Marks (CGPDTM) provides global coverage. Trademark law operates on the principle of territoriality, meaning each country has its own independent registration system and its own set of rules. However, international frameworks exist that simplify the process of extending your Indian trademark overseas. The most significant of these is the Madrid Protocol, which India joined in 2013. Understanding how these systems work is essential for any business with cross-border ambitions.
The Principle of Territoriality: Why Indian Trademarks Don't Travel
Trademark rights are inherently territorial. This means a trademark registered under the Trade Marks Act, 1999, grants exclusive rights only within India's geographical boundaries. It allows you to prevent others from using an identical or deceptively similar mark for the same class of goods or services, but only in Indian courts and markets. The moment your product crosses the border, that protection ends.
This principle applies universally, not just to India. A trademark registered in the United States has no legal force in Germany. A mark registered in Japan doesn't protect the owner in Brazil. Each country examines and grants trademarks independently based on its own laws, classification systems, and examination standards. Two entirely different businesses could legitimately own the same trademark in two different countries if neither has registered in the other's territory.
For Indian businesses, the practical implication is clear. If you export goods, operate e-commerce platforms serving foreign customers, or licence your brand to overseas partners, you need separate trademark protection in each target market. Relying solely on your Indian registration leaves your brand vulnerable to misuse, counterfeiting, and even trademark squatting in foreign jurisdictions, where someone else could register your mark before you do.
The Madrid Protocol: India's Gateway to International Protection
India acceded to the Madrid Protocol on 8 July 2013, opening a streamlined route for Indian businesses to secure trademark protection abroad. The Madrid System, administered by the World Intellectual Property Organisation (WIPO), allows you to file a single international application through the Indian Trademark Registry and designate multiple countries where you seek protection. Currently, the system covers over 130 countries, including major trading partners like the United States, United Kingdom, China, Australia, Japan, and the European Union.
The process begins with your existing Indian trademark application or registration, which serves as the "basic mark." You file Form MM2(E) through the Indian Trademark Office, specifying which Madrid Union member countries you want to designate. The Indian office certifies that your international application matches your domestic filing and forwards it to WIPO's International Bureau. WIPO then notifies each designated country, and the trademark office of each country examines the application under its own national law. If no objection is raised within the prescribed period (typically 12 to 18 months), protection is granted in that country.
One critical rule to understand is the five-year dependency provision under Section 36D(5) of the Trade Marks Act, 1999. For the first five years, the international registration depends entirely on your Indian base mark. If the base mark is cancelled, withdrawn, or refused within this period, the international registration falls as well. After five years, the international registration becomes independent and stands on its own in each designated country.
Indian Registration vs International Registration: Key Differences
Understanding the distinction between domestic and international trademark protection helps you make informed decisions about your brand strategy. The following table outlines the major differences between an Indian trademark registration and an international registration under the Madrid Protocol.
| Parameter | Indian Registration | Madrid Protocol Registration |
| Geographical Scope | India only | 130+ designated countries |
| Governing Law | Trade Marks Act, 1999 | Madrid Protocol + national laws of each designated country |
| Filing Requirement | Form TM-A filed with Indian Registry | Form MM2(E) filed through Indian Registry to WIPO |
| Examination | By Indian Trademark Examiner | Separately by each designated country |
| Validity | 10 years, renewable indefinitely | 10 years, renewable centrally through WIPO |
| Fees | Rs. 4,500 (e-filing) per class | 653 Swiss Francs basic fee + country-specific fees |
| Dependency | Independent | Dependent on Indian base mark for first 5 years |
How to Extend Your Indian Trademark Overseas: Step-by-Step
Securing an Indian trademark overseas through the Madrid Protocol involves a structured process. Each step requires careful attention to ensure your application is processed without delays or rejections.
Step 1: Secure Your Indian Base Mark
Before filing an international application, you must have either a pending trademark application or a completed registration with the Indian Trademark Registry. This base mark forms the foundation of your international filing. Conduct a thorough trademark search to confirm no conflicting marks exist before proceeding.
Step 2: Identify Target Countries
Determine which countries are critical for your business expansion. Prioritise markets where you already export, plan to enter within the next few years, or face a high risk of trademark squatting. Remember, each designation adds to your filing cost, so a strategic selection based on business priorities is more practical than blanket coverage.
Step 3: File Form MM2(E) Through the Indian Office
Prepare the international application on Form MM2(E) and submit it through the Indian Trademark Registry. The application must match the details of your base mark, including the mark itself, the applicant's name and address, and the class of goods or services. Pay the handling fee to the Indian office and the international designation fees (in Swiss Francs) payable to WIPO.
Step 4: WIPO Processing and Country Examination
Once the Indian Registry certifies and transmits your application, WIPO registers it and notifies each designated country. Each country's trademark office then examines the application under its own laws. If a designated country raises an objection (known as a provisional refusal), you must respond through a local trademark attorney in that country. If no objection arises within the prescribed period, protection is automatically granted.
Step 5: Maintain and Renew Centrally
One of the biggest advantages of the Madrid System is centralised management. You can renew the international registration for all designated countries through a single filing with WIPO. Changes in ownership, address, or scope can also be recorded centrally. The trademark renewal cycle for international registrations is 10 years, same as domestic registrations.
Alternatives to the Madrid Protocol for International Protection
The Madrid Protocol isn't the only route. If your target country isn't a Madrid Union member, or if strategic considerations favour a direct approach, you can file a national trademark application directly with that country's intellectual property office. This involves engaging a local trademark attorney, complying with the country's specific filing requirements, and paying separate fees. Direct filing gives you an independent registration that isn't tied to your Indian base mark, eliminating the five-year dependency risk.
For businesses targeting European markets specifically, the European Union Trade Mark (EUTM) system offers a single registration covering all 27 EU member states. Filed through the European Union Intellectual Property Office (EUIPO), a EUTM provides uniform protection across the EU, which can be more efficient than designating individual European countries through the Madrid System. For businesses expanding into the GCC or ASEAN regions, direct national filings remain the primary route in countries that haven't joined the Madrid Union.
Regardless of the filing route, conducting a preliminary search in each target jurisdiction is essential. A mark that is registrable in India may face objections elsewhere due to prior rights held by different parties. Engaging local counsel who understands the specific market's trademark landscape can save considerable time and expense. If you encounter challenges or objections in foreign jurisdictions, understanding the trademark opposition process is valuable, as similar procedures exist in most countries.
Common Mistakes Indian Businesses Make with International Trademarks
One of the most frequent errors is assuming that an Indian registration provides automatic worldwide protection. This misconception has cost businesses dearly, especially when they discover that a competitor or a trademark squatter has already registered their brand name in a key export market. Recovering a mark from a squatter is expensive, time-consuming, and not always successful.
Another common mistake is neglecting to file internationally before entering a new market. By the time a business begins selling products abroad, a third party may have already filed an identical or similar mark. Filing proactively, ideally at the same time as your Indian application, gives you priority and avoids this risk. The Paris Convention's six-month priority claim allows you to leverage your Indian filing date when applying in other member countries within six months.
Failing to maintain the Indian base mark during the five-year dependency period is another critical oversight. If your Indian application faces an objection or if you miss the trademark hearing deadline, the entire international registration could collapse. Ensuring the domestic mark remains active and unchallenged during this period is vital for sustaining your global protection.
Conclusion
Indian trademark validity is confined to Indian territory. No domestic registration, regardless of how long you've used the mark or how well-known your brand is, automatically extends protection across borders. However, the Madrid Protocol provides Indian businesses with a practical, cost-effective route to secure trademark rights in over 130 countries through a single application filed via the Indian Trademark Registry.
The key takeaway is simple. If your business operates internationally, or plans to, your trademark strategy must also be international. File early, choose your target countries strategically, and maintain your Indian base mark diligently during the five-year dependency period. For professional assistance with trademark registration and international trademark protection, working with experienced professionals ensures your brand is safeguarded wherever your business goes.
