Trademark rights are territorial. A registration in India protects the mark in India and nowhere else. For a business selling into multiple countries, or planning to, that produces an uncomfortable arithmetic: protection costs scale roughly with the number of countries, and the number of countries a modern business touches can be large.
The instinct when confronted with this is either to file everywhere, which is unaffordable, or to file nowhere beyond the home market, which is what most businesses actually do until something goes wrong. Neither is a strategy. This article sets out a sequencing approach that keeps the cost proportionate while preserving the positions that matter.
Start from the priority date
The single most useful fact in international trademark practice is the six-month Convention priority period. Under the Paris Convention, an application filed in one member country can, within six months, be used to claim priority in other member countries, so that the later applications are treated as though filed on the date of the first.
The practical consequence is that a business does not have to decide about every country at once. It has to make a first filing, and then it has six months of thinking time during which its position in every other Convention country is preserved.
Founders and brand owners should therefore treat the home filing as starting a clock, and use that window deliberately rather than letting it expire by inattention.
Decide what "protection" means for each market
Before deciding where to file, it helps to sort markets into categories, because they warrant different treatment.
Core markets. Where you currently sell in volume, or will within the planning horizon. These get full registration, in all relevant classes.
Manufacturing and sourcing countries. Often overlooked. If your goods are manufactured in a country you do not sell in, you may still need protection there, because it affects your ability to stop counterfeit goods being produced and exported.
High-risk markets. Countries with a known pattern of trademark squatting, or first-to-file systems with weak use requirements, where a third party can register your mark and then block your entry. These sometimes warrant defensive filing well ahead of commercial activity.
Future markets. Where you intend to go but not soon. Here the question is whether the risk of pre-emption justifies the cost now.
Incidental markets. Where a small volume reaches customers through a marketplace or distributor. Frequently these do not justify registration, and platform enforcement based on registrations elsewhere is adequate.
Being honest about which category each country falls into is what keeps the budget finite.
The route options
Once markets are chosen, there are three mechanisms.
| Route | How it works | Suits |
|---|---|---|
| National filing | A direct application in each country, through local counsel | Small numbers of countries; countries outside Madrid; where local specifics matter |
| Madrid Protocol | One international application through the home office, designating member countries | Multiple countries, several of them Madrid members |
| Regional systems | A single filing covering a group of countries, such as the European Union trade mark | Where the regional bloc is a core market |
The Madrid Protocol in practice
India is a member of the Madrid Protocol, which means an Indian applicant can file an international application through the Indian Trade Marks Registry as office of origin, based on an Indian application or registration, and designate other member countries.
Its advantages are real: a single application, a single language, a single fee payment, one renewal date, and one place to record changes of name, address or ownership. For a business filing in a meaningful number of member countries it is usually the cheaper and simpler route.
Its constraints are equally real and should be understood before choosing it:
- Dependency on the base mark. For the first five years, the international registration depends on the home application or registration. If the base is refused, withdrawn or successfully attacked within that period, the international registration falls with it. This is often called central attack. Transformation into national applications is possible but costs money and effort.
- The specification is anchored to the base. The international registration cannot be broader than the home mark's goods and services. If the Indian specification is narrow, the designations are narrow.
- Refusals are still national. Each designated office examines under its own law and can refuse. Responding to a refusal requires local counsel in that country, at national cost. Madrid saves on filing, not necessarily on prosecution.
- Not every country is a member. Some commercially significant jurisdictions are not, and those require national filings regardless.
A common and sensible structure is a hybrid: Madrid for the member countries where prosecution is likely to be straightforward, national filings for non-member countries and for markets where a tailored specification or a local strategy is needed.
Our worldwide IPR practice handles both routes and the analysis of which to use for a given portfolio.
Class and specification strategy
Two decisions here have long consequences.
Classes. Filing in classes you do not trade in wastes money and, in jurisdictions with use requirements, creates registrations vulnerable to cancellation for non-use. Filing in too few leaves gaps that competitors and squatters exploit. The right answer is current trade plus a defensible near-term extension, reviewed as the business changes.
Specification wording. Practice differs sharply by country. Some offices accept broad class headings; others require specific goods. A specification drafted for one system may be objected to in another. Where Madrid is used, the base specification has to be drafted with the designated countries' practice in mind, which is an argument for thinking about the international position before finalising the home filing.
Clearance before commitment
Filing without searching in a new market is an expensive way to discover a conflict. Before entering a market, the minimum check is a search of the national register for identical and similar marks in the relevant classes, plus, where the market matters, a check of unregistered use.
Where a conflict exists, options usually include adjusting the mark for that market, narrowing the specification, negotiating a coexistence agreement, or challenging the earlier mark if it is vulnerable, for example for non-use. All of these are cheaper before launch than after.
After registration: the parts businesses forget
A portfolio is not a filing exercise; it is an ongoing obligation.
Renewals. Terms and renewal windows differ by country. A missed renewal can mean losing a registration that took years to obtain. Centralised docketing is not optional above a handful of registrations.
Use requirements. Several jurisdictions allow cancellation of registrations unused for a defined period. Keep evidence of use, dated, by country. Businesses that have used a mark for years and cannot prove it lose cancellation actions they should win.
Watching. A watching service flags applications for similar marks in your markets, giving the chance to oppose during the publication window. Opposition is far cheaper than cancellation or litigation after registration.
Recordal of changes. Company name changes, mergers and address changes have to be recorded. Unrecorded changes create chain-of-title problems that surface at the worst moment, typically during a transaction.
Customs recordal. Several countries, India included, allow trademark owners to record rights with customs authorities to assist in intercepting infringing imports. Where counterfeiting is a live risk, this is worth doing.
A workable sequence
- File in the home market, cleanly and in the right classes.
- Within six months, decide the priority-claiming filings and execute them.
- Choose Madrid, national or hybrid for the remaining target markets on the analysis above.
- Clear each market before entry, not after.
- Set up docketing for renewals and use evidence from the first registration, not the twentieth.
- Put a watch in place for core markets.
- Review the portfolio annually against where the business now actually trades, and prune registrations that no longer serve a purpose.
Discussing your portfolio
Businesses arrive at this in different states: some with nothing filed anywhere, some with an inherited patchwork of registrations in odd countries and gaps in obvious ones. Both are workable starting points.
If you would like a view on where your brand is exposed and what a proportionate programme would look like, our IP protection and trademark pages set out the scope of the work, and you can start a conversation through the contact page.
