Is a Trademark Registered in India Valid Worldwide?

Last Updated at: August 01, 2020
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Is a Trademark Registered in India Valid Worldwide_

A trademark is any mark, sign, numeral, shape, letter, or combination of these that provide an identity to the business. In the modern world, we increasingly realise the economic worth of the trademark, as consumers increasingly rely on brand image. All around us, we see trademarks such as the Apple logo, the distinctive McDonald logo. This makes it an essential intellectual property right. In this post, we examine the validity of the trademarks registered in India and whether they are Valid for protection even outside. 

Filing a trademark in India

  • A trademark has registration in India by filing an application at the Trade Marks Registry (TMR) within the Office of the Controller General for Patents, Designs, and Trademarks (CGPDTM). Vakilsearch helps you in your Trademark registration.
  • The registration of a trademark in India is for 10 years and is renewable indefinitely for similar periods.
  •  Trademarks can now have registration online, with trademark search processes also automated online. 

Are trademarks registered in India valid worldwide?

  • Trademarks are territorial, and hence, would require separate filing in each country where you intend to have it protected. However, there are international conventions such as the Madrid protocol that serves as a centralised registration system for trademark grants in all member countries. 

Significance of the Madrid Protocol

The Madrid Protocol is a comprehensive international agreement for mutual grant of trademarks.  Since trademarks can only grant protection within the national borders of the country of registration, this protocol grants the right of the trademark in select countries. The protocol resulted from the Madrid Agreement of 1989 and has been in force since the year 1995. This has implementation by the International Bureau of the World Intellectual Property Organization (WIPO), Geneva, Switzerland. 

India and the Madrid Protocol

In 2013, India assented to becoming a member of this international treaty for trademarks. This had led to MSMEs becoming the largest beneficiaries of the scheme. While filing to the Madrid protocol is done through the Indian trademarks office, it has allowance on domestic companies to protect their mark across multiple jurisdictions of their choice. 

International trademark search

Before filing a trademark through the Madrid Protocol route, it is advisable to run a quick search for similarity with existing trademarks. 

Register your brand now

Why should your trademark be protected internationally?

There are several advantages of filing a trademark under the Madrid Protocol 

  • Protecting export market shares: In the case of exports to another country where your brand acquires significant value, it is necessary to protect your goodwill and business repute in that country. 
  • Prospective markets: Even if your brand does not have a presence in a country but aims to set up a liaison office, or deal with exporters, licensees, contractors, etc in that country, it is advisable to secure trademark rights at the earliest. 

Process for trademark registration under Madrid Protocol

  • An application has to be made to the Indian trademark registration website, accessible at www.ipindia.gov.in 
  • An application should designate the member countries where the mark have protection 
  • The Indian Trade Mark registry would check whether the person applying is the holder of the basic mark and identify whether goods and services covers by that basic mark. 
  • This application is then transferred to the World Intellectual Property Organisation, headquarter in Geneva for getting 
  • If no objection is within 18 months of the notification of international registration, it considers having to protection 
  • The protection to the trademark offers as if the application has registration directly through the local process of a trademark application in the member country  

Frequently Asked Questions

1. Can foreign applicants also apply for the registration of their trademarks in India?

Yes, there is no bar on foreign applicants from applying for registration of trademarks in India. Other than through the route of the Madrid Protocol, a company can also apply through the regular process of trademark registration in India. 

2. Are there any advantages of filing under the Madrid Protocol?

The following are the advantages of filing a trademark application under the Madrid Protocol 

  • The Madrid Protocol provides a cost-effective, easy, fast, and accessible route to trademark Protection in the International domain. In the absence of this, an applicant would have to separately file multiple trademark applications in each country. 
  • The Madrid Union has over 100 members, including both States and intergovernmental organisations. Thus, it covers territories of 116 countries. This represents more than 80% of world trade flows and constitutes very attractive markets for Indian exports. 
  • It saves time and effort that would otherwise be incurred in paying multiple fees, translations in local languages, currency exchanges, etc 
  • Such filing increases franchising opportunities outside of India and international partnerships and helps integrate global supply chains better 

 

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Is a Trademark Registered in India Valid Worldwide?

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A trademark is any mark, sign, numeral, shape, letter, or combination of these that provide an identity to the business. In the modern world, we increasingly realise the economic worth of the trademark, as consumers increasingly rely on brand image. All around us, we see trademarks such as the Apple logo, the distinctive McDonald logo. This makes it an essential intellectual property right. In this post, we examine the validity of the trademarks registered in India and whether they are Valid for protection even outside. 

Filing a trademark in India

  • A trademark has registration in India by filing an application at the Trade Marks Registry (TMR) within the Office of the Controller General for Patents, Designs, and Trademarks (CGPDTM). Vakilsearch helps you in your Trademark registration.
  • The registration of a trademark in India is for 10 years and is renewable indefinitely for similar periods.
  •  Trademarks can now have registration online, with trademark search processes also automated online. 

Are trademarks registered in India valid worldwide?

  • Trademarks are territorial, and hence, would require separate filing in each country where you intend to have it protected. However, there are international conventions such as the Madrid protocol that serves as a centralised registration system for trademark grants in all member countries. 

Significance of the Madrid Protocol

The Madrid Protocol is a comprehensive international agreement for mutual grant of trademarks.  Since trademarks can only grant protection within the national borders of the country of registration, this protocol grants the right of the trademark in select countries. The protocol resulted from the Madrid Agreement of 1989 and has been in force since the year 1995. This has implementation by the International Bureau of the World Intellectual Property Organization (WIPO), Geneva, Switzerland. 

India and the Madrid Protocol

In 2013, India assented to becoming a member of this international treaty for trademarks. This had led to MSMEs becoming the largest beneficiaries of the scheme. While filing to the Madrid protocol is done through the Indian trademarks office, it has allowance on domestic companies to protect their mark across multiple jurisdictions of their choice. 

International trademark search

Before filing a trademark through the Madrid Protocol route, it is advisable to run a quick search for similarity with existing trademarks. 

Register your brand now

Why should your trademark be protected internationally?

There are several advantages of filing a trademark under the Madrid Protocol 

  • Protecting export market shares: In the case of exports to another country where your brand acquires significant value, it is necessary to protect your goodwill and business repute in that country. 
  • Prospective markets: Even if your brand does not have a presence in a country but aims to set up a liaison office, or deal with exporters, licensees, contractors, etc in that country, it is advisable to secure trademark rights at the earliest. 

Process for trademark registration under Madrid Protocol

  • An application has to be made to the Indian trademark registration website, accessible at www.ipindia.gov.in 
  • An application should designate the member countries where the mark have protection 
  • The Indian Trade Mark registry would check whether the person applying is the holder of the basic mark and identify whether goods and services covers by that basic mark. 
  • This application is then transferred to the World Intellectual Property Organisation, headquarter in Geneva for getting 
  • If no objection is within 18 months of the notification of international registration, it considers having to protection 
  • The protection to the trademark offers as if the application has registration directly through the local process of a trademark application in the member country  

Frequently Asked Questions

1. Can foreign applicants also apply for the registration of their trademarks in India?

Yes, there is no bar on foreign applicants from applying for registration of trademarks in India. Other than through the route of the Madrid Protocol, a company can also apply through the regular process of trademark registration in India. 

2. Are there any advantages of filing under the Madrid Protocol?

The following are the advantages of filing a trademark application under the Madrid Protocol 

  • The Madrid Protocol provides a cost-effective, easy, fast, and accessible route to trademark Protection in the International domain. In the absence of this, an applicant would have to separately file multiple trademark applications in each country. 
  • The Madrid Union has over 100 members, including both States and intergovernmental organisations. Thus, it covers territories of 116 countries. This represents more than 80% of world trade flows and constitutes very attractive markets for Indian exports. 
  • It saves time and effort that would otherwise be incurred in paying multiple fees, translations in local languages, currency exchanges, etc 
  • Such filing increases franchising opportunities outside of India and international partnerships and helps integrate global supply chains better 

 

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Avani Mishra is a graduate in law from the National Law Institute University, Bhopal. She qualified the Company Secretary course with an All India Rank 1 and is a recipient of the President’s Gold Medal for her academic distinctions. She also holds a B.Com degree with a specialization in Corporate Affairs and Administration.