Next Steps After International Trademark Registration

Once the International Bureau of the World Intellectual Property Organization (WIPO) grants your international registration under the Madrid System, you receive an International Registration Certificate. This certificate confirms your registration date, the mark, the goods/services covered, and the designated countries where you seek protection.

However, this is not the final step. Each designated country (for example, India, the United States, or Japan) then conducts its own substantive examination. The International Bureau forwards your application to each country's trademark office. Those offices have 12 to 18 months (or longer in some cases) to examine the application under their national laws. They may issue provisional refusals based on conflicts with existing marks, descriptiveness, or other grounds.

You must monitor these national phase examinations. If a country issues a provisional refusal, you have a limited period (usually 2-6 months) to respond through a local agent. Failure to respond results in loss of protection in that country. The International Bureau does not handle these responses—you must engage a local trademark attorney in each refusing country.

Your international registration is valid for 10 years from the registration date. Renewal is filed with the International Bureau, not with individual countries. You can renew up to six months before the expiry date, and there is a six-month grace period after expiry with an additional fee.

The renewal fee depends on the number of designated countries and classes of goods/services. You must pay the basic fee (653 Swiss francs for a black-and-white mark) plus individual fees for each designated country. Some countries also require separate renewal filings at the national level, even after the international renewal. For example, the United States requires a declaration of use between the 5th and 6th year after registration, and again at renewal. India does not have such a requirement for international registrations, but you must check each country's rules.

You should set up a renewal calendar at least 12 months before expiry. Missing a renewal means the mark is cancelled in all designated countries. There is no restoration after the grace period expires.

Yes, you can file a subsequent designation to add new countries to your existing international registration. This is done through the International Bureau, not by filing a new application. The subsequent designation must be for the same mark and the same goods/services as the original registration. You cannot expand the list of goods/services—only the territorial scope.

The subsequent designation is examined by the newly designated country's trademark office under its national laws. The same 12-18 month examination period applies. You must pay the designation fee for each new country. This is useful if your business expands to new markets after the initial registration.

You cannot, however, change the mark itself or the list of goods/services through a subsequent designation. For any change to the mark or scope of protection, you must file a new international application.

The International Bureau does not monitor for infringing marks. You must actively monitor trademark filings in each designated country. You can use commercial trademark watch services that alert you to conflicting applications. In India, you can also search the IPO's trademark database periodically.

If you find a conflicting mark, you must take action in each country individually. The Madrid System does not provide a unified enforcement mechanism. You must file opposition proceedings in the country where the conflicting mark is filed. For example, if someone files a similar mark in India, you must file an opposition with the IPO within the opposition period (usually 4 months from publication).

For actual infringement (use of your mark without authorization), you must enforce your rights under each country's national laws. In India, you can file a civil suit for trademark infringement under the Trade Marks Act, 1999. You may also file a criminal complaint for counterfeiting. The international registration does not give you any special enforcement powers—it simply provides a basis for claiming priority and validity.

If your international registration is cancelled (for example, due to non-renewal or cancellation of the basic application), it affects all designated countries. This is a critical risk of the Madrid System. If the basic application (filed in your home country) is cancelled within the first five years, the international registration is also cancelled. This is called "central attack."

After five years, the international registration becomes independent of the basic application. However, if you fail to renew the international registration, it lapses in all designated countries simultaneously. There is no way to maintain protection in individual countries after the international registration lapses.

To mitigate this risk, you can convert the international registration into national applications in each designated country if the international registration is cancelled within five years. This conversion must be done within three months of cancellation. You retain the original filing date. You should consult a trademark attorney immediately if your basic application is at risk of cancellation.

If you have received an international registration certificate, review the examination status in each designated country and engage local agents where provisional refusals are issued. Set up a renewal calendar and a trademark watch service. For any enforcement action or conversion, consult a qualified trademark attorney in the relevant country.

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This page provides preliminary information. It is not legal advice. For your matter, consult a qualified professional.