21 Feb

Harsha M | IP Attorney - Corporate IP lawyer

How to File International Trademarks: A Step-by-Step Guide

A Comprehensive Legal Guide for Companies Growing Internationally

As companies expand beyond their home markets, cross-border brand protection becomes a top legal priority. An international trademark does more than safeguard goodwill — it strengthens enforcement rights, enhances licensing opportunities, and increases long-term commercial value.

Understanding how international trademark protection works is essential for businesses planning global growth.

What Is an International Trademark?

Contrary to common belief, there is no single trademark registration that grants worldwide protection. Trademark rights are territorial, meaning protection must be obtained separately in each country.

To simplify multi-country filings, the Madrid Protocol, administered by the World Intellectual Property Organization (WIPO), allows applicants to file one international application and designate multiple member countries.

While the filing is centralized, each designated country still applies its own national trademark laws when examining the application.

Benefits of International Trademark Registration

From both a legal and commercial standpoint, international filing offers:

• Centralised filing and portfolio management

• Cost-effective protection across multiple jurisdictions

• Uniform renewal and recordal system

• Stronger brand value for licensing and global expansion

For startups, growing businesses, and multinational corporations, the Madrid System provides scalability, procedural efficiency, and legal certainty.

Legal Pre-Requisites for Filing an International Trademark

Before filing an international application, certain legal requirements must be satisfied:

1. Basic Application or Registration

The applicant must have a basic trademark application or registration in their home country. This serves as the foundation of the international filing and must be filed with or registered by the applicant’s Office of Origin.

2. Connection to a Madrid Member Country

The applicant must have a valid link to a Madrid Protocol member country through:

• Nationality

• Domicile

• A real and effective commercial or industrial establishment

  Step-by-Step Guide to Filing an International Trademark

  Step 1: Conduct an International Trademark Search

  A professional clearance search helps identify conflicting marks in target jurisdictions, reducing the risk of refusal or enforcement issues.

  Search tools include:

  • National trademark databases

  • WIPO’s Madrid Monitor database

  A comprehensive search is strongly recommended before filing.

  Step 2: File or Finalise the Basic Trademark

  The international application must strictly mirror the basic trademark in:

  • Applicant name

  • Trademark representation

  • Goods and services (Nice Classification)

  Any inconsistency may result in refusal or limitation.

  Step 3: File the International Application (Madrid System – Form MM2)

  The application is submitted through the Office of Origin, which:

  • Certifies the application

  • Verifies consistency with the basic mark

  • Forwards it to WIPO

  Step 4: Formal Examination by WIPO

  WIPO conducts a formal examination to verify:

  • Classification accuracy

  • Payment of required fees

  • Completeness of documentation

  If compliant, the mark is:

  • Recorded in the International Register

  • Published in the WIPO Gazette

    Step 5: Substantive Examination by Designated Countries

    Each designated country independently examines the trademark under its national laws.

    Possible outcomes include:

    • Acceptance

    • Provisional refusal (absolute or relative grounds)

    • Conditional acceptance

    If no refusal is issued within 12 or 18 months, protection is automatically granted in that jurisdiction.

    Step 6: Responding to Provisional Refusals

    If a provisional refusal is issued:

    • A local trademark attorney must be appointed

    • Responses must comply with local procedural laws

    Failure to respond results in loss of rights only in that specific country, not globally

    Managing International Trademarks After Registration

    One of the key advantages of the Madrid System is centralized post-registration management.

    Trademark owners can:

    • Renew registrations

    • Record assignments or ownership changes

    • Limit goods or services

    • Manage designated countries

    All through a single system administered by WIPO.

    The Five-Year Dependency Period (Central Attack Rule)

    A critical legal feature of international trademark registration is the five-year dependency period, also known as the central attack rule.

    For the first five years, the international registration depends entirely on the basic application or registration.

    If the basic trademark is:

    • Revoked

    • Withdrawn

    • Refused

    • Cancelled

    within this period, the international registration may be cancelled to the same extent.

    This risk must be carefully assessed before initiating international filings.

    Conclusion

    International trademark filing is a cornerstone of global brand protection strategy. While the Madrid System offers efficiency and cost advantages, successful registration requires:

    • Legal precision

    • Strategic jurisdiction selection

    • Careful risk assessment

    • Professional execution

    For businesses expanding internationally, proactive trademark planning is not optional — it is essential.