This blog delves into the need for international trademark registration for businesses aiming to go global. It discusses the Madrid Protocol's role in simplifying the process, the prerequisites for international trademark registration, and the process itself. Further, it outlines the benefits offered by this system over traditional, nation-specific registrations.
Introduction
In today’s rapidly globalising world, where businesses seek to establish their brands in various international markets, protecting intellectual property rights across borders is of utmost importance. One such intellectual property right that needs international safeguarding is the trademark, a unique symbol, word, or phrase that distinguishes a company’s goods or services. Fortunately, the process of international trademark registration has been simplified by the Madrid Protocol, allowing businesses to protect their trademarks in multiple jurisdictions using a single application.
Madrid Protocol
The international registration of trademarks is governed by the Madrid Protocol. Originating from the Madrid Agreement, which was established on 14 April 1891, the Protocol was officially adopted on 27 June 1989.
India updated the Trademarks Act, 1999 to adhere to the stipulations of the Madrid system once it became a Madrid Protocol member. The Trademarks (Amendment) Act, 2010, which was ratified on 21 September 2010, marked the introduction of international trademark registration under the Madrid Protocol in India.
Under the Madrid Protocol, a trademark owner can register their trademark in all member countries of the Madrid Union. The Union is comprised of 112 members, representing 128 nations. Through the filing of a single application in their national trademark office or office of origin, proprietors can secure international trademark registration.
In the case of businesses registered in India, the Registrar of Trademark Office serves as the office of origin where an international trademark application under the Madrid Protocol is filed. This office processes the application and records it with the Intellectual Property Organisation in Geneva.
Pre-requisites for International Trademark Registration
Before filing an international application, there are some prerequisites to consider:
- The applicant must have a ‘basic’ registration or application (the ‘home’ application or registration) in their home IP office.
- The mark and list of goods and services on the international application must be identical to those on the ‘home’ application or registration.
- The applicant must have a bona fide intention to use the trademark in all designated countries.
- International Trademark Registration Process Under Madrid Protocol
- The international trademark registration process under the Madrid Protocol consists of several steps:
- Application through Home Office: The process starts with filing an application or obtaining a registration in the applicant’s ‘home’ IP office.
- International Application: After securing a home registration, the applicant can file an international application via the same office, which will then forward it to WIPO.
- Formal Examination by WIPO: WIPO conducts a formal examination of the application. If approved, the trademark is recorded in the International Register and published in the WIPO Gazette of International Marks.
- Substantive Examination by Designated Offices: The designated countries will conduct a substantive examination following their national laws. If no objections are raised within 12 or 18 months, the protection of the trademark is granted in the designated countries.
Benefits of International Trademark Registration
The Madrid Protocol offers multiple benefits, including:
Convenience:
Applicants can file one application, in one language, with one set of fees to protect their trademark in multiple countries.
Cost-Effective:
It eliminates the need to file separate national applications in different languages and currencies, reducing the overall cost.
Simplicity:
It simplifies subsequent management of the mark as changes, renewals, or expansion of geographical coverage can be recorded through a single procedural step.
Flexibility:
It provides the flexibility to expand protection to more countries even after registration.
Procedure For An International Application
A business must first register its trademark in its home country to file an international application. Once the trademark is registered, the business can file an international application through the Madrid System. The application must include the following information:
- The applicant’s name and address
- The trademark’s image or representation
- The goods and services covered by the trademark
- The list of countries where protection is sough
Once the international application is filed, the International Bureau of WIPO reviews it to ensure that it complies with the Madrid System’s requirements. If the application is approved, the International Bureau forwards it to the relevant national trademark offices for examination and registration.
The national offices have up to 18 months to decide whether to approve or reject trademark registration. If the trademark is approved, it is registered in each country where protection is sought.
Conclusion
In the face of globalisation, the Madrid Protocol represents a vital tool for businesses to safeguard their trademarks internationally. It provides a unified, cost-effective, and efficient process for registering and managing trademarks worldwide, bolstering the growth of businesses in the international market.
FAQs on International Trademark Planning
Is the Indian trademark valid worldwide?
No, an Indian trademark registration is only valid within India. To protect a trademark internationally, one must register it in the respective countries or through international systems such as the Madrid Protocol.
Do trademarks expire in India?
Yes, trademarks in India are valid for ten years from the date of filing. However, they can be renewed indefinitely every ten years.
Do I have a right to use an expired trademark in India?
Potentially. If a trademark has not been renewed and has thus expired, it may be available for use. However, the original owner has a grace period of one year to renew the mark. Furthermore, if the expired trademark has significant recognition, it may still offer the previous owner some protection under passing-off laws. Legal advice is recommended before using an expired trademark.
|
Disclaimer The brand(s) referred to herein are mentioned for purely representative purposes only. This article is not intended either to recommend or warn against any brand, nor is any of the content about said brand(s) to be considered an assessment. Please verify the information given about the workings of the company(ies) that possesses said brand(s) with the company(ies) directly. |
Read more:
