A Trademark originated from India can be protected globally through International Trademark Registration. Read on to learn about the best ways to get one!
A International trademark registration for your business is a name, phrase, symbol, word, number, or other design that identifies a company, person, or a line of a company’s products or services. The trademark serves as the identity of a firm and helps consumers in determining the distinction between branded goods and services. Thus, trademark registration is required to prevent unauthorized use of the mark by third parties. But only certain geographical areas are eligible for trademark registration. Therefore, when a trademark is registered in India, the registration only offers protection within India. To protect a trademark outside of India, a trademark owner must get foreign trademark registration. With international registration, they can use their mark outside of India and prevent others from doing the same on the international market. International trademark registration is the process of protecting a trademark in multiple countries through a single application. This type of registration provides trademark owners with a cost-effective and streamlined way to obtain protection for their marks in different jurisdictions.
Madrid Protocol
International trademark registration is regulated by the Madrid Protocol. The Madrid Protocol amending the Madrid Agreement was accepted in Madrid on June 27, 1989. The Madrid Agreement governing the international registration of trademarks was adopted on April 14, 1891. After India joined the Madrid Protocol, the Trademarks Act, of 1999 was updated to adhere to the Madrid system. The Trademarks (Amendment) Act, 2010 was approved on September 21, 2010, and India began accepting applications for trademark registration under the Madrid Protocol. The Madrid Protocol permits trademark registration in nations that are Madrid Union members. 128 countries are represented by the 112 members of the Madrid Union. The trademark owner can seek global trademark registration under the Madrid Protocol by filing a single application with the national trademark office or office of origin. The Registrar of Trademark Office is the office of origin to file an international trademark application pursuant to the Madrid Protocol where the business is registered in India. The trademark registration application will be processed by the office of origin and filed with the Intellectual Property Organization in Geneva. The international trademark registration system is governed by the Madrid Protocol, which is a treaty that currently has over 120 member countries. Through the Madrid Protocol, trademark owners can file a single application with the World Intellectual Property Organization (WIPO) to register their mark in multiple countries.
Pre-requisites for International Trademark Registration
Before submitting an application for global trademark registration, the trademark applicant must make sure that the following conditions are satisfied:
- The applicant must have an actual and functional business or commercial entity in India, be an Indian national, or both.
- The applicant must be either the owner of a registered trademark with the Indian Trademarks Registry or must have submitted an Indian national trademark application.
- The applicant should submit an international application for the same trademark for which a national trademark registration has been obtained or which is referenced in the national trademark application.
- The list of products and services in the international application should match that in the national trademark registration or application.
- The applicant must specify in the international application if he or she wants protection in one or more Madrid Protocol signatory nations.
- This process can be less time-consuming and less expensive than filing separate applications in each country where protection is sought.
- International trademark registration provides a level of legal certainty to trademark owners, as their marks are protected under international law.
Key Considerations in International Trademark Registration
International trademark registration for your business can be a complex process, and there are several key considerations to keep in mind when pursuing this type of registration. Here are some of the most important factors to consider:
Eligibility: To be eligible for international trademark registration, you must have a registered trademark in your home country or have filed an application for registration.
Jurisdiction: International trademark registration for your business is governed by the Madrid Protocol, which allows for registration in multiple countries through a single application. However, not all countries are members of the Madrid Protocol, so it’s important to research which countries you want to register your trademark in and whether they are members.
Classification: Trademarks are classified by the goods and services they represent, and it’s important to ensure that your trademark is properly classified for each country you want to register it in.
Language: The application process for international trademark registration requires the use of specific terminology, depending on the countries involved. It’s important to ensure that your application is properly translated and meets the language requirements for each country.
Fees: International trademark registration can be expensive, with fees varying depending on the number of countries you want to register your trademark in. It’s important to budget accordingly and factor in any additional costs, such as translation fees.
Benefits of International Trademark Registration
International trademark registration offers several benefits for businesses looking to protect their brand on a global scale. Here are some of the key benefits:
Protection: International trademark registration provides protection for your brand in multiple countries, making it easier to enforce your trademark rights and prevent others from using your brand without permission.
Cost-effective: International trademark registration can be a cost-effective way to protect your brand in multiple countries, as it allows you to file a single application and pay a single set of fees.
Simplified process: The Madrid Protocol simplifies the process of international trademark registration, making it easier and more efficient to register your trademark in multiple countries.
Brand recognition: International trademark registration can help build brand recognition and reputation on a global scale, making it easier to expand your business into new markets.
Competitive advantage: Having a registered trademark in multiple countries can give your business a competitive advantage over others in your industry, as it demonstrates a commitment to protecting your brand and intellectual property
International Trademark Registration Process
Under the Madrid Protocol, the following steps must be taken in order to register a trademark internationally:
Trademark Search
Before submitting an application for foreign trademark registration, the applicant must first do a trademark search. The applicant can do a trademark search on the WIPO’s Global Brand Database to see if any similar or identical registered trademarks exist. The applicant must confirm that there are no similar or identical registered trademarks in any of the countries covered by the Madrid Protocol before submitting a trademark registration application therein. The application will be denied if another trademark already exists that is similar or identical.
File Registration Application
The applicant must submit Form MM2 (E) for an global trademark registration application following a trademark search. As the office of origin for Indian companies, the applicant should submit the application for international trademark registration to the Office of the Registrar of Trademarks in India. The application will be processed and verified by the Registrar of Trademarks. The Registrar will file it with the World Intellectual Property Organization (WIPO) in Geneva following verification. The foreign trademark application must be submitted online through the official IP India website, along with the processing fee.
Examination of Application by WIPO
When the WIPO receives the trademark registration application from the Registrar of Trademarks, they will review it. If the WIPO finds the registration application to be appropriate, the trademark is entered into the International Register and made public in the WIPO Gazette of International Trademarks.
Notification of Trademark Registration by WIPO
Each Madrid Protocol signatory country where the applicant chooses to seek registration will get a notification from the WIPO regarding the international trademark application. The member nations will review the international registration application in accordance with the laws and regulations governing trademarks. Within 12 to 18 months of receiving the international trademark registration application, the member nations will submit their assessment report and inform the WIPO of the application’s acceptance or rejection.
Opposition to Trademark Registration
If any member nations object to the trademark registration application, they must notify the WIPO in a certain manner. The Madrid Protocol member country in question and the trademark applicant will directly undertake the opposition processes to the trademark application. The steps for opposing a motion include responding, appealing, hearing, and prosecuting. The WIPO will take part in every step of the opposition process. Once a mark is registered internationally, the owner can take legal action against infringers in any of the countries where the mark is protected. International trademark registration can also help businesses expand their global reach and protect their brand identity. However, it is important to note that not all countries are members of the Madrid Protocol, and therefore, separate applications may be required for those countries. Working with a trademark attorney or agent who is experienced in international trademark registration can help ensure a smooth and successful registration process.
Grant of International Trademark Registration
When the member countries accept the application, the trademark will be registered for 10 years in each of the selected member countries under the Madrid Protocol. A statement of the grant, which attests to the global trademark registration of an Indian trademark, will be given to the applicant upon the acceptance of the registration application.
FAQs:
1. How much does it cost to get an international trademark?
Trademark registration costs vary based on regions and classes. Vakilsearch offers cost-effective solutions tailored to your needs. Discover their efficient trademark services today.
2. Is the Indian trademark valid worldwide?
An Indian trademark is valid only within India. For global protection, explore Vakilsearch's international trademark services ensuring comprehensive coverage.
3. Which country is best for trademark registration?
Choosing the right country for trademark registration depends on your market interests. Vakilsearch guides you through this crucial decision, offering expert insights for successful registrations globally.
Conclusion
Now that you are aware of how to register an international trademark registration, safeguard your brand, and stay on top of your property rights. It should be noted that the procedure itself can take some time. Additionally, if your application contains errors or the WIPO or another national trademark office receives the notification of a provisional refusal, this could complicate the situation even more and cause prolonged delays. If you would feel safer getting some legal assistance to take you through the whole procedure, you can contact Vakilsearch.
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