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TRADEMARK PROTECTION THROUGH INTERNATIONAL REGISTRATION | Company Vakil

Protection of a trade mark is limited to a territorial jurisdiction. Generally, you will have to file different sets of applications for registration of a trade mark in different countries. If your business involves dealings outside of India, it is necessary to register your trade mark at the offices where you wish to protect your trade mark. Sounds difficult right? That is when Madrid Protocol comes into play to save the day.

Madrid Protocol was one of the two treaties of the Madrid System for international registration of trade mark. With one single application, you can file an application for trade mark registration at a number of countries. The Madrid Union currently has 105 members covering 121 countries. If you wish to register your trade mark in a member country, all you have to do is file an application. If you want to go for a country or countries which is/are not a member of the Madrid Union, you will have to file different applications at the office of such country/ countries. Let’s see how international registration works.

Chapter IV A of the Trade Marks Act, 1999 deals with special provisions relating to protection of trade marks through international registration under the Madrid Protocol.

To understand the registration process, it is important to know certain terms, which are as follows:

  1. A Contracting Organization means a contracting party which is an intergovernmental organization,
  2. Contracting Party is a contracting state or a contracting organization, party to the Madrid Protocol,
  3. A Contracting State means a country, party to the Madrid Protocol.

International application originating from India-

  1. Where an application for the registration of a trade mark has been made or a trade mark has been registered, 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.
  2. A person holding an international registration may make an application on the form prescribed by the common regulations for extension of the protection resulting from such registration to any other Contracting Party.
  3. An international application under sub-section (1) or sub-section (2) shall designate the Contracting Parties where the protection resulting from the international registration is required.
  4. The Registrar shall certify in the prescribed manner that the particulars appearing in the international application correspond to the particulars appearing in the applications under section 18 and 23 of the Trade Marks Act, and shall indicate the date and number of the application or registration as well as the date and number of the application from which that registration resulted, and shall, within the prescribed period, forward the international application to the International bureau of the World Intellectual Property Organization for registration.
  5. Where, at any time before the expiry of five years of international registration, the application under section 18  or 23 has been withdrawn, cancelled, expired or has been fully refused in respect of all or some of the goods and services listed in the international registration, the protection from such international registration shall cease to have effect.

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.

  1. The Registrar shall, during the period of five years beginning with the date of international registration, transmit to the International Bureau, each information referred to in sub-section (5).
  2. The Registrar shall notify the International bureau of the cancellation, keeping in view the current status of the basic application or registration, as the case maybe.

How to apply?

World Intellectual Property Organization (WIPO) administers the International registrations of trade marks. If an individual or an entity wants to apply for the international registration, the process would be as follows:

  1. The applicant must have already registered or applied for a trade mark in the office of origin, which means, if you are from India, your application for international registration must come through India’s Intellectual Property Office.
  2. Once you have registered or applied for a trade mark with your office of origin, you can file an application for international registration under the Madrid System.
  3. The office of origin then sends the application to WIPO to check the particulars of the trade mark and to certify the application.
  4. After the formal examination, WIPO than registers the mark in the International Register and publish the registration in the Gazette.
  5. A certificate of registration is issued and the designated Contracting Parties are than notified. For example, if a company with its office of origin in India, wants its trade mark registered in three other countries, all of those countries will be notified.
  6. The scope of the international registration will be determined by under the domestic law within twelve to eighteen months.

Fees payable for international registration-

The fees payable comprises of:

  1. The basic fee,
  2. A complementary fee for each Contracting Party designated, and,
  3. A supplementary fee for each class of goods and services in excess of three.

Duration and renewal of international registration-

  1. The international registration of a trade mark at the International Bureau shall be for a period of ten years and may be renewed for a period of ten years from the expiry of the preceding period.
  2. Subject to payment of surcharge prescribed by the rules, a grace period of six months shall be allowed for renewal of the international registration.

Conclusion

International registration of trade mark has its own advantages and disadvantages. While the process of registration through Madrid System will cost less than applying for different countries individually; cancellation of trade mark in the origin office will affect the international registration as well if it is within five years of registration. There are more benefits than drawbacks. With so many countries being the member of the Madrid Union, it is easier to get your trade mark internationally registered in whichever country you want without much of a hustle. India became member of the Madrid System in 2013 and since then we have seen an increase in international registration of trade marks. As WIPO has set a limit of eighteen months for the completion of registration process, it will be on India’s Registry offices to make sure that both national and international registrations are given equal importance, as challenging as it sounds, one thing is certain that the numbers of applications are only going to increase with the passage of time.

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