Section 36D explained: this guide covers what it means, who it applies to, the step-by-step process, documents required, fees, due dates and penalties in India — so you can stay compliant with confidence and avoid costly mistakes.
Section 36D is the outgoing route of the Madrid system. It lets an Indian applicant or registered proprietor use a section 18 application or a section 23 registration as the base for an international application, tells the Registrar to certify and forward it, and sets the five-year dependency of the international registration on its Indian base.
An applicant under section 18 or a registered proprietor under section 23 may make an international application on the form prescribed by the Common Regulations, designating the Contracting Parties where protection is wanted (36D(1), (3)). The Registrar certifies that its particulars match the Indian application or registration and forwards it to the International Bureau (36D(4)). For five years from the international registration, if the Indian base is withdrawn, cancelled, expired or finally refused, the international protection ceases (36D(5)).
Sub-section (1): who may apply
"Where an application for the registration of a trade mark has been made under Section 18 or a trade mark has been registered under Section 23, the applicant or the registered proprietor may make an international application on the form prescribed by the Common Regulations for international registration of that trade mark."
Two starting points: a pending application under section 18, or a registered mark under section 23. Under section 36B these are the "basic application" and "basic registration"; see sections 36A-36C. The form is the one prescribed by the Common Regulations, not an Indian form. Our trademark registration service covers the Indian base application that this route needs.
Sub-section (2): extending an existing international registration
"A person holding an international registration may make an international application on the form prescribed by the Common Regulations for extension of the protection resulting from such registration to any other Contracting Party." A holder can extend the protection of an existing international registration to further Contracting Parties.
Sub-section (3): designating Contracting Parties
An international application under sub-section (1) or (2) "shall designate the Contracting Parties where the protection resulting from the international registration is required." The applicant names the territories in which protection is wanted.
Sub-section (4): the Registrar certifies and forwards
"The Registrar shall certify in the prescribed manner that the particulars appearing in the international application corresponding to the particulars appearing, at the time of the certification, in the application under Section 18 or the registration under Section 23, and shall indicate the date and number of that application or the date and number of that registration as well as the date and number of the application from which that registration resulted, as the case may be, and shall within the prescribed period, forward the international application to the International Bureau for Registration, also indicating the date of the international application."
In steps:
- The Registrar certifies that the particulars in the international application correspond to those in the Indian application or registration at the time of certification;
- he indicates the date and number of the application or registration (and of the application from which the registration resulted);
- he forwards it to the International Bureau within the prescribed period, indicating the date of the international application.
The prescribed manner and period are for the Trade Marks Rules, 2017; the Act states no number of days. Practically, the particulars in the international application must match the Indian record; a mismatch is a matter to resolve before certification. For the filing process see how to file Form TM-M, the Madrid Protocol application.
Sub-section (5): the five-year dependency
"Where at any time before the expiry of a period of five years of an international registration, whether such registration has been transferred to another person or not, the application under Section 18 or the registration under Section 23, as the case may be, has been withdrawn or cancelled or has expired or has been finally refused in respect of all or some of the goods or services listed in the international registration, the protection resulting from such international registration shall cease to have effect."
| Element | Text |
|---|---|
| Period | Any time before the expiry of five years of the international registration |
| Transfer | Applies "whether such registration has been transferred to another person or not" |
| Triggers | The Indian application or registration is withdrawn, cancelled, has expired, or has been finally refused |
| Extent | In respect of all or some of the goods or services listed in the international registration |
| Effect | Protection resulting from the international registration "shall cease to have effect" |
This is the risk in building on a base: if the Indian application is refused, or the Indian registration is cancelled or lapses in the first five years, the international protection can fall away for all or some of the goods or services.
Proviso. "Where an appeal is made against the decision of registration and an action requesting for withdrawal of application or an opposition to the application has been initiated before the expiry of the period of five years of an international registration, any final decision resulting into withdrawal, cancellation, expiration or refusal shall be deemed to have taken place before the expiry of five years of the international registration." So if an appeal, or an action for withdrawal, or an opposition is under way before the five years end, a later final decision that ends the base is treated as having happened within the five years.
Sub-section (6): the Registrar informs the International Bureau
"The Registrar shall, during the period of five years beginning with the date of international registration, transmit to the International Bureau every information referred to in sub-section (5)." So the Registry is to pass on events affecting the base during the five years.
Sub-section (7): notifying cancellation
"The Registrar shall notify the International Bureau the cancellation to be effected to an international registration keeping in view the current status of the basic application or the basic registration, as the case may be." The Indian base's status drives any cancellation.
Example. Veda Ayurveda files an Indian application for "VEDAMRIT" and uses it as the basis for an international application designating several Contracting Parties. If, in year three of the international registration, the Indian application is finally refused for all the goods, the protection resulting from the international registration ceases (36D(5)). If an opposition was already pending before year five, the proviso treats a later final refusal as having occurred within the five years.
What section 36D does not say
- It does not state fees; the Rules and the Common Regulations do.
- It does not list the Contracting Parties.
- It does not say how long the prescribed period for forwarding is.
- It does not say what happens to rights in the Indian mark itself when the international protection ceases; that is a question for other provisions.
Practical points
- Strengthen the base first. The international registration depends on it for five years.
- Match the particulars to the Indian record, and choose designations deliberately.
- Watch the Indian application. A refusal, withdrawal, lapse or cancellation within five years can end the international protection.
Need help with an outgoing application?
The international filing is only as strong as the Indian application behind it. Our trademark registration team prepares the Indian base, watches it through examination and opposition, and can advise on the timing of an international filing.
Key takeaways
- A section 18 applicant or section 23 proprietor may make an international application on the Common Regulations form.
- The application must designate the Contracting Parties.
- The Registrar certifies correspondence with the Indian record and forwards it to the International Bureau within the prescribed period.
- For five years the international protection depends on the Indian base; if it is withdrawn, cancelled, expired or finally refused, protection ceases for the affected goods or services.
- A pending appeal, withdrawal action or opposition before year five brings a later final decision within the five years.
Read next
- Sections 36A-36C: Madrid Protocol application, definitions and registry
- Section 36E: international registrations designating India
- How to file an international trademark application under the Madrid Protocol
- WIPO services for Indian applicants: PCT, Madrid, Hague
Disclaimer: Based on the Trade Marks Act, 1999 as amended by the Tribunals Reforms Act, 2021 and the Jan Vishwas (Amendment of Provisions) Act, 2023, as consulted on 1 October 2026. Forms, fees and procedure are set by the Trade Marks Rules, 2017 as amended from time to time. This article is general information, not legal advice; check the official text before acting.