Trademarks are symbols, words, letters, numbers, or phrases associated with a company or individual's goods or services. Consumers can distinguish trademarked goods or services from competitors based on their trademark identity. Therefore, trademark registration is necessary to prevent others from using it unauthorisedly.
The registration of trademarks is, however, restricted to specific countries. Because of this, trademark registration in India only protects the brand within the country, and international trademark registration is required to preserve it outside of the country. The trademark owner with international registration can apply for the mark outside India and prevent third parties from using it for the same effect on the global market. This article provides a detailed overview of international trademark registration, its benefits, and its process.
Did You Know? After the Trademarks (Amendment) Act 2010, India became the first to adopt the Madrid Protocol for international trademark registration.
Also read: Chemical Products Under Trademark Class 1
What Is an International Trademark?
It is true that "international trademark rights" refer to a collection of trademark rights that span multiple jurisdictions, but each jurisdiction's presence and protection are distinct from the others. While different governments recognize and enforce trademark rights differently, most countries have agreed on the basics of submitting trademark applications.
Which Country Registers International Trademark?
Suppose you sell your products or services under a brand in any country and jurisdiction where you expect to use the brand in the future. In that case, you should register your mark in those jurisdictions. In some cases, companies report their brands in places where counterfeiting of intellectual property is a problem. Some jurisdictions can use a pattern before applying, but certain jurisdictions do. You should consult a local attorney for more information.
International Trademark Registration Benefits
Madrid Protocol trademark applications have the following advantages:
- It is only necessary to submit one International application.
- In addition to English, French, or Spanish, you can apply the language of the contracting party.
- The Swiss Franc (CHF) is the currency you must pay the government filing fees for each foreign country in India.
- The Madrid Convention assigns a single number to each application that is valid throughout all territories.
Nepal, Pakistan, Sri Lanka, Bangladesh, Myanmar, Hong Kong, Malaysia, Indonesia, Kuwait, Iraq, Mauritius, Taiwan, Saudi Arabia, Thailand, Canada, and others aren't part of the Madrid Protocol. So an Indian citizen must file a separate trademark application in these countries if they wish to register a trademark there.
International Trademark Registration Requirements
You must meet three essential requirements to register an international trademark in India:
- Applicants must be Indian citizens, residents of India, or have legitimate businesses or commercial establishments in that country.
- You must apply to the Indian Trade Marks Registry to register for the international mark.
- Applicants must decide which Madrid Protocol member countries they wish to register their trademarks.
International Trademark Registration Process in India
Applicants seeking protection under a trademark must apply for registration under the laws of the country they intend to register. To register a brand, a company or individual must comply with the laws of the country where they intend to register a trademark. It is not easy to obtain an international brand; however, recent changes to the Indian trademark registration process have simplified the process for applicants in other countries. Here are the steps for registering an international trademark in India.
In India, you can register a trademark in two ways. International trademark registration involves the following steps:
Option 1: Application in Every Foreign Country
The foreign country's Trademark office must receive an international trademark application in compliance with the country's laws and regulations. Individuals must file a trademark registration application for each country where the applicant wants trademark protection, as each country's IPR rules differ.
Procedure for Option 1:
Step 1: Contact the Appropriate National Trademark Office
A National Trademark Office application is the first step in the process. For this national office, you must complete Form MM2. The national office will examine the application after filing. The World Intellectual Property Organization (WIPO) will review your application worldwide if it contains no errors. Typically, this takes two months.
Step 2: WIPO Examines Trademark Applications
After the national office accepts your application, the WIPO will review it. Its primary purpose is to verify that you are a genuine applicant and that the application is free of errors. It will appear in the International Trademark Gazette published by the World Intellectual Property Organization, which will forward to each country's national office.
Also read: What are the Types of Goods under Trademark Class 8?
Step 3: National Trademark Offices Examine Trademark Applications
If you apply for international trademark registration in each country you specify, it works the same as if you applied for a federal trademark. In this step, trademark authorities examine your application to identify flaws and potential conflicts with an existing brand in that country.
Publication of the application in the national gazette or bulletin is a common aspect of the federal procedure to give other trademark holders a chance to express their concerns. When pre-registered trademarks have issues, they have one year to send a provisional refusal notice - sometimes, you can extend this period to 18 months. Your brand is now protected in that country if no notification of provisional refusal is received.
Option 2: Madrid System International Application
In addition to the Madrid System, there is another way to register an international trademark. Obtaining trademark protection simultaneously in many jurisdictions is possible with it. Two international treaties govern this, the Madrid Protocol and the Madrid Agreement. All signatory countries have agreed to protect trademarks registered by residents of their home countries in all other signatory countries. Under the Protocol, nationals of any signatory are eligible for rights in contracting parties to the Protocol based on applications or registrations pending in their country or jurisdiction of origin.
The WIPO's International Bureau handles both the Agreement and Protocol. After September 1, 2008, only countries bound by the Protocol and Agreement are subject to the Protocol's provisions. As of that date, the Protocol is the only legal basis for regulating International Registrations in jurisdictions that are parties either to the Protocol alone or to both the Protocol and the Agreement. A solely bound jurisdiction is the only one governed by the Agreement.
Procedure for Option 2:
The Madrid Protocol governs International trademark registration, which entered into force in 1996, and the Madrid Agreement, which dates back to 1891. Applicants residing in various countries can file an international trademark application at the trademark office of their home country under the Madrid Protocol. India adopted the Madrid Protocol in 2013 due to globalization and ease of access abroad.
The Madrid Protocol allows for filing Trademark registration applications with India's Office of the Registrar of Trademarks, along with the required documents. Registrars process applications and, after verification, file Trademark applications at the Geneva Office of the World Intellectual Property Organization.
WIPO examines trademark applications, and if deemed appropriate, the mark is registered and published in the Gazette of International Marks of the World Intellectual Property Organization (WIPO).
The International Bureau issued an international trademark registration certificate and notified each country under the Madrid Protocol. Within 12-18 months, governments can inform the Bureau of their objections to the mark under the Madrid Protocol.
The International Bureau must receive any opposition to the trademark registration in a prescribed manner. Each country's protection for the mark is the same as if that country's office had registered the mark if none of the countries refuses to register the mark.
As soon as a Madrid Protocol trademark is registered, it exists for ten years. WIPO or the concerned office of origin can renew international trademark registrations at the end of the ten years.
Also read: What Are Trademark Classes? Explained in Detail Along with Trademark Class List
In today's world, international trademark protection is the most challenging component of trademark protection. Because trademark registration is impossible in all countries, trademark rights must be registered wherever it applies. There are geographical restrictions on the registration of trademarks. Upon reaching the country's borders, any national trademark registration expires.
It is impossible to exercise a country's trademark registration rights outside its borders. You must apply for an individual trademark application for each nation where you want your brand to be present. The other country must establish its procedures for trademark registration. In addition to gaining international recognition, you can protect your brand around the globe if you register it.
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