Things To Know International Trademark Registration

Introduction

The term “Trademark” is referred to a brand for a business containing a phrase and/or logo which differentiate a company from others. A trademark would stand your brand in the marketplace as well as it would protect the brand legally. It would be great to register for a trademark if you want to do business internationally.

What Is The Need To Register For An International Trademark?

Trademarks registered in a specific country are limited to that country only. To protect a brand in another country it is required to apply for the trademark in that country according to the rules, regulations and policies of that country.

Considering the above scenario if decided to go on a global platform then it would be necessary to file an application for each country separately which sounds very tedious, time-consuming. Also, if you consider separate fees with each application then the cost goes high. Or there is one more solution to avoid all these which is called a “Madrid Protocol”. Let’s discuss the Madrid Protocol in detail further.

Madrid Protocol

If an Indian company wants to spread its business globally then an easy help in the term of "Madrid Protocol" is at a service. It is a simple and low-cost procedure for filing trademark applications and managing trademark registrations abroad. The Madrid Union has 100 members recently which are including states as well as intergovernmental organizations who are contracting parties to the Madrid Protocol. Top trading partners of India are members of the Madrid Union.

The Madrid Protocol governs the system of International Trademark Registration. It came into action in 1996 though the Madrid Agreement started in 1891. Under the Madrid Protocol, a trademark can be registered in multiple countries by filing an application for an international trademark registration via the trademark office of the applicant.

Requirements For Registering International Trademark Registration

Three main requirements for obtaining International Trademark Registration in India:

1. An applicant should be having Indian nationality or domiciled in India or real & profitable business or commercial establishment in India.
2. An applicant should have an Indian trademark application or the registration of a trademark with the Indian Trademark Registry. This national trademark application would be used while applying for the international trademark registration. The international trademark registration will have the same trademark as mentioned in the national trademark application. Along with it the goods and services will also be the same as mentioned in the national trademark.
3. An applicant should select one or more member countries of the protocol in the international trademark registration.

Filing For International Trademark Under Madrid Convention

The steps to follow while applying for International Trademark Registration:

1. Applying Through your National Trademark Office - The first necessary requirement to file for the international trademark registration is the brand should be already registered or filed for registration in the Trademark & Intellectual Property (IP) office of India. The trademark office which receives an application under Madrid protocol is known as the office of origin. Next, an applicant needs to apply for the international trademark through the same office which will certify and forward it to the World Intellectual Property Organization (WIPO).
2. Formal Examination by WIPO - WIPO does the formal examination of the application. Further, it is recorded in the International Register and published in the WIPO Gazette of International Marks once the application gets approved. WIPO then sends the certificate to the applicant and notifies the IP offices of the territories for which an applicant has been applied.
3. Examination by National Offices - The IP offices in the territories then will decide within the period of 12 or 18 months and WIPO will register the decision in the International Register and notify an applicant.

Benefits Of International Trademark Registration Under Madrid Convention

1. A brand or trademark will be a part of 80% of the international market by registering in Madrid Protocol. It opens the door in the global market with many more opportunities.
2. The Madrid system is centralized, therefore by registering in this system will expand the business in new markets.
3. By filing a single application is giving an opportunity to register the trademark in multiple countries which is a hassle-free, cost-effective and time-saving option for registering for an international trademark.
4. The international trademark registration is valid for 10 years from the date of registration. It can be renewed at WIPO by submitting the same form.
5. The registration protects the brand from counterfeiting in other countries.
6. The International Trademark can be used as license agreements and sales contracts.

Conclusion

Spreading business internationally has become much easier in recent years, unlike the old days. The agreements and systems are now in place to help in streamlining the international trademark registration application so that can leverage the value from IP in multiple countries. If used properly these can be a time-saver, cost-saver and uncomplicated for the companies.
By: Samar Inam Khan
The author can also be reached at ilegalexperts@gmail.com