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International Trademark Registration Guide | Company Vakil

Introduction 

Trademark Registration in India and International Trademark Registration should not be confused between. They both have different registration procedures and provide different benefits to a company. As the name suggests the former protects the products and services at a national level and the later do the same but at an International level. The Madrid System for the International Registration of the Marks is the responsible international system for facilitating the registration of trademarks worldwide. India acceded to the Madrid Protocol and became a member of the by the World Intellectual Property Rights Organisation(WIPO) on 8th July 2013. Filing an application will give you an International Trademark which is enough to protect your mark, product or services in various jurisdictions. This application can be filled through a trademark office or e-Filling can also be done.

Methods of International Trademark registration

There are mainly two methods that are prescribed to file an International application. These are given below:

  • International application in each foreign country
    An International application must be filed directly to the trademark office of the foreign country by following the laws and regulations of that country to seek protection in any country directly. So, for this purpose, the applicant must hire a local law firm which is practicing in Trademark in that foreign country. If we talk about in practice, then the applications to countries which is not a party to the Madrid system can be filed as per above.
  • International application under the Madrid system
    Under the Madrid protocol, the trademark registration can be initiated by filing an International application before the registrar of a trademark for specific countries. So, the Indian trademark office collects International trademark application and after finding it in conformity with the Madrid protocol transmits such an International application to the WIPO which is further responsive to transmit it to the concern foreign countries. Each International application is processed by the foreign country as per their law and all communications are routed through Indian Government.

Name of the countries that protect International Trademark registration

Following are the countries that are parties to the Madrid protocol. Thus, an International Trademark can be afforded protection in the following countries:

  1. African Intellectual Property Organization (OAPI)
  2. Albania
  3. Algeria
  4. Antigua and Barbuda
  5. Armenia
  6. Australia
  7. Austria
  8. Azerbaijan
  9. Bahrain
  10. Belarus
  11. Belgium
  12. Bhutan
  13. Bosnia and Herzegovina
  14. Botswana
  15. Bulgaria
  16. Cambodia
  17. China
  18. Colombia
  19. Croatia
  20. Cuba
  21. Cyprus
  22. Czech Republic
  23. Democratic People’s Republic of Korea
  24. Denmark
  25. Egypt
  26. Estonia
  27. European Union
  28. Finland
  29. France
  30. Georgia
  31. Germany
  32. Ghana
  33. Greece
  34. Hungary
  35. Iceland
  36. India
  37. Iran
  38. Ireland
  39. Israel
  40. Italy
  41. Japan
  42. Kazakhstan
  43. Kenya
  44. Kyrgyzstan
  45. Latvia
  46. Lesotho
  47. Liberia
  48. Liechtenstein
  49. Lithuania
  50. Luxembourg
  51. Mexico
  52. Monaco
  53. Mongolia
  54. Montenegro
  55. Morocco
  56. Mozambique
  57. Namibia
  58. Netherlands
  59. New Zealand
  60. Norway
  61. Oman
  62. Philippines
  63. Poland
  64. Portugal
  65. Republic of Korea
  66. Republic of Moldova
  67. Romania
  68. Russian Federation
  69. Rwanda
  70. San Marino
  71. Sao Tome and Principe
  72. Serbia
  73. Sierra Leone
  74. Singapore
  75. Slovakia
  76. Slovenia
  77. Spain
  78. Sudan
  79. Swaziland
  80. Sweden
  81. Switzerland
  82. Syrian Arab Republic
  83. Tajikistan
  84. The former Yugoslav Republic of Macedonia
  85. Tunisia
  86. Turkey
  87. Turkmenistan
  88. Ukraine
  89. United Kingdom
  90. United States of America
  91. Uzbekistan
  92. Vietnam
  93. Zambia
  94. Zimbabwe

Requirements for obtaining International Trademark registration

Mainly three things are required for obtaining an international trademark registration in India:

  • It is important for the applicant to be a national of India or domiciled in India or have a real and effective business or commercial establishment in India.
  •  It is necessary for the applicant to have a national (Indian) trademark application or registration of a trademark with the Indian Trade Marks Registry. Hence, this national application will be used as the basis of the international application. The same trademark will have by the international application as mentioned in the national trademark application/registration. The goods and services should be identical with national mark.
  • It is must for the applicant in the international application to choose one or more other member countries of the Madrid Protocol, where the applicant wants to protect his trademark.

Process for International Trademark Registration in India

Stage 1: Application through the Trademarks Registry (Office of origin)

The registration or application is known as the basic mark. You then need to submit your international application through the Trademarks Registry, which will certify your mark and forward it to WIPO.

Stage 2: Formal examination by WIPO

WIPO will only conduct a formal examination of your international application to check that your application is in order. Once it is approved, your mark will be recorded in the International Trademark Register and published in the WIPO Gazette of International Marks after which WIPO will then send you a certificate of your international registration and notify the IP Offices in all the territories where you wish to have your mark protected.

Stage 3: Substantive examination by the National or Regional Trademark Office of the designated Contracting Party

The Trademark Offices of the countries where you want to protect your mark will decide within 12 or 18 months whether to grant your mark protection in accordance with their domestic legislation. WIPO will record their decisions in the International Register and then notify you.

If a designated country refuses to protect your mark, either wholly or partially, their decision will not affect the decisions of other designated countries. You can challenge a refusal decision directly before in that country according to their laws. If a designated country accepts to protect your mark, it will issue a statement granting protection.

  • The international registration of your mark is valid for 10 years.
  • You can renew the registration at the end of each 10-year period directly with WIPO with effect in the designated country concerned.

Generally, a company seeking a global expansion looks for an International Trademark.

  • Internation Trademark is accepted worldwide and has certain benefits.
  • It makes the customers overseas rely on you, trust you and even potential investors and partners see this mark as an overall trust benchmark.

If you are seeking International Trademark, you need to fill an online form or you can submit one in the Office of the Registrar of Trademarks with the prescribed fees. If the application is passed without any objections the mark is recorded in the International Register.

  • But before going through an International Trademark Registration it is mandatory to have a National trademark registered.
  • After the application passes successfully your trademark is then published by WIPO thus protecting your product, mark, services in up to 98 countries.
  • The mark is then valid for ten years after which the mark will be required to be renewed. All applications can be directly sent to WIPO by e-mail, regular mail or facsimile.
  • International form MM2 is required to be filled since MM1 and MM3 are no more acceptable.
  • For registering your trademark in the United States, you have to also file form MM18. Forms MM2 and MM18 can be directly obtained from the official website of WIPO. Though International Trademark Registration will protect your product in up to 98 Countries, you should fill in only the countries where you provide, distribute your services and products keeping in mind about your finances.

Therefore, we can conclude that International Trademark registration can be done over different countries solely dependent on you by filing MM2 and MM18 under the Madrid Protocol.

The only thing you need to keep in mind is that you need an already registered National trademark for the product you wish to have an International Trademark for and you should refrain from copying or having similar marks and products that are already registered internationally, it may cause objections.

Benefits of International Trademark registration

Following are the four major benefits for which you must file an International Trademark:

  1. Your product will be known to the global consumers if operated online

Anyone can imagine even before the registration process what will be the global market popularity of your product once it reaches to international markets. Your business name, brand and your trademark can become more desirable as your popularity grows. Just by registering your trademark in other countries where your products are available can reduce the confusion of buyers in choosing the original products. On the other hand, the chances of infringement in which ill-intentioned parties often try to trade on your popularity by adopting your name or logo and try their best to damage your market reputation by selling inferior goods and services will also be reduced.

       2. You may be more vulnerable to counterfeiters based overseas

Counterfeiting is a common factor in the overseas industries especially when companies do not register their trademarks internationally. U.S Trademarks laws provide protections against counterfeiting imports by taking the next step of registering your trademark in countries. It helps you to involve the local government in the country where the illicit products are being made, and as such can help prevent counterfeit items from reaching shores other than those of the U.S.

        3. Your supply chain may involve International Commerce 

If you have chosen to sell your product worldwide, then it will be beneficial for you to register your trademark in countries where there is an involvement of your supply chain to prevent, for instance, situations where a subcontractor may illicitly appropriate your name to profit from their involvement with you.

        4. You may register your mark in other localities through Madrid protocol under right circumstances

This Protocol allows the trademark owner to submit one application and that application can then be extended to various different countries that are members of the protocol. Ultimately, this gives results to cost saving while filing a trademark in various countries. Always make a point of it that your trademark application must meet all local standards and you must protect your mark vigorously to avoid challenge or cancellation. But in case, the availability of the Madrid protocol makes a strong case for international registration, based on the added convenience alone.

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