India Joins the Madrid Protocol

India became a member of the Madrid Protocol on July 8, 2013. The initial advantages of the Madrid system for Indian applicants (and for those designating India) were substantial compared to filing conventional or ordinary applications.

Initial Advantages of Madrid in India

Initially: no limitation on the number of goods/services in the description for Madrid filings (non-Madrid applicants paid per character beyond 500); no mandatory association fee for Madrid filers (others paid association fees per prior application); savings in attorney fees; and centralised portfolio management through WIPO.

Post-2017: Narrowing of Advantages

Since the Trademark Amendment Rules 2017 were notified on March 6, 2017, the disparities between Madrid filings and direct national filings in India have narrowed considerably — requiring a fresh cost-benefit analysis for each applicant's specific situation.

Current Analysis: Madrid vs Direct National Filing

When deciding between Madrid and direct national filing in India, practitioners should consider: (1) Number of target jurisdictions — Madrid becomes more cost-effective as designated countries increase; (2) Complexity of goods/services description — post-2017 the differential has reduced; (3) Home jurisdiction — whether the applicant's national office is a Madrid member and the strength of their home base registration; (4) Risk tolerance — provisional refusals and their notification timelines; (5) Post-registration flexibility — central attack risk for Madrid registrations.

Aswal Associates advises clients on optimal filing strategy — including India as home office or designated country under the Madrid system — based on their portfolio, target markets, and budget.