International Trademark

Overview of International Trademark Registration

Trademark registration is limited to specific jurisdictions, requiring separate applications for each country where protection is sought. Prompt action is essential as national registrations expire at the borders of the country and do not extend beyond.

The Madrid Protocol, established in 1996, aims to streamline trademark registration across multiple countries. It outlines the framework for international trademark registration, simplifying the process for applicants.

Under the Madrid Protocol, individuals seeking trademark registration must submit an international application to the trademark office of origin, which is typically the applicant’s home country. For example, for businesses operating in India, the Office of the Registrar of Trademarks in India serves as the office of origin. This office manages the application and forwards it to the World Intellectual Property Organization (WIPO) in Geneva for registration.

If the trademark application meets the required standards, the mark, logo, or word is entered into the International Register and published in the WIPO Gazette of International Marks. The International Bureau issues a certificate of international registration and notifies Madrid Protocol signatory countries about the registration. The Protocol sets a strict deadline of 12 and a half years for addressing any issues raised by designated offices.

Required Documents for International Trademark Registration

The Indian Trademark Office mandates that an international trademark application under the Madrid Protocol must be accompanied by the following:

  • International Trademark Registration
  • An application form
  • Power of attorney
  • Payment of handling fee
  • Payment of international designation fee payable to WIPO.

Process of International Trademark Registration

Step 1: Applying Through National Trademark Office Before proceeding with an international application, ensure registration with the national Trademark and IP office. If not yet registered, submit an application to initiate the basic trademark application process. Once this process concludes, you may apply for an International Trademark search at the same office, which will then be forwarded to WIPO.

Step 2: WIPO Examination Your application undergoes scrutiny by the World Intellectual Property Organization (WIPO). Upon approval, your international mark is published in the WIPO Gazette of International Marks and included in the International Register. WIPO notifies the IP Offices in each jurisdiction where you’ve applied for mark protection and issues you a registration certificate.

It’s important to note that global registration isn’t guaranteed at this stage. Decisions are made after careful evaluation and selection by the IP/Trademark Offices in respective jurisdictions.

Step 3: Examination By National Offices After the specified period (usually 12 or 18 months) from enactment, the IP Offices of relevant regions determine the extent of mark protection needed. The International Register is updated with selections made by Trademark Offices, and WIPO informs you accordingly.

If an IP Office chooses not to fully or partially protect your mark, it doesn’t impact decisions made by other Offices. You have the right to challenge a refusal directly before the concerned Trademark Office. Upon accepting responsibility for mark protection, the Office issues a statement of assurance.

This International Trademark remains valid for 10 years. Renewal is possible after this period if desired.

Direct Application for International Trademark Registration

To seek trademark protection directly in any country, you must submit an international application to the respective nation’s trademark office, adhering to its legal prerequisites.

Required Documents

  • Replica of the logo (optional)
  • Form 48
  • Certificate of registration for Udyog Aadhar
  • Certificate of incorporation or partnership deed
  • Identity document of the signatory
  • Proof of address of the signatory

Direct Filing Process

Step 1: Apply to the Appropriate National Trademark Office Initiate the process by submitting an application to the relevant national trademark office. Utilize Form MM2 for most countries, while in the US, Form MM-18E is required. Following submission, the national office conducts an examination of the application.

Note: Particularly advantageous for online operators, this registration facilitates expansion into the e-commerce sector, enabling sales to international consumers.

Step 2: Examination of Trademark Application by WIPO Upon approval by the national office, the application undergoes evaluation by WIPO. This review ensures the application’s accuracy before proceeding to publication in WIPO’s International trademark gazette.

Step 3: Examination of Trademark Application by National Trademark Offices of Requested Countries The respective national trademark authorities review your application at this stage for any discrepancies.

Step 4: Domestic Procedure Part of the national procedure involves publishing the application in their national gazette or bulletin, providing other trademark owners an opportunity to raise objections.

Step 5: Provisional Rejection The national office has up to one year to issue a provisional rejection notification, which can be extended to 18 months or more in cases involving pre-existing trademarks. If no issues arise, the trademark proceeds to registration without delay.

Madrid Protocol

The Madrid Protocol system enables the worldwide registration of trademarks via a single application, which can encompass multiple countries. This ability to consolidate registrations into one application offers significant advantages for portfolio management and cost savings.

Required Documents

  • Proof of business or registered user
  • Applicant’s PAN card and Aadhar card
  • Details of the logo
  • Registration as an MSME
  • Trademark application number or trademark registration certificate (if the trademark is pending in India)

Process Under Madrid Protocol

Step 1: International Application Filing Through an Attorney Initiate the process by filing the international application through an attorney, who must be authorized by the applicant using Form TM-48. Additionally, the required stamp duty must be paid as per the respective state regulations.

Step 2: Document Submission If the foreign country is a member of the European Union, a second application using Form MM-18(E) is necessary. For the US, the applicant must specify a second language other than French, German, Italian, or Spanish. The international application must be completed in the prescribed Form MM-2(E).

Step 3: Verification Upon receiving an international application, the registrar ensures compliance with the Madrid Protocol’s requirements before forwarding it to WIPO. WIPO then transfers the application to the relevant foreign government after verification.

Step 4: National Registration The international registration relies on the ongoing validity of the local registration for a period of five years. If the local registration expires or if the trademark application is rejected, withdrawn, or abandoned within five years, the international registration loses its protection.

Step 5: WIPO Application WIPO carefully examines international applications received from offices of origin. Any discrepancies are typically communicated through the office of origin within three months of notification. Upon acceptance, the goods/services specified in the international registration are protected

Benefits of International Trademark Registration

  1. Legal Defence: International trademark registration provides legal protection against any infringement by a third party. Registered trademarks are easier to defend in court, strengthening your legal position in case of infringement. It’s imperative to ensure that the trademark search confirms registration before pursuing legal action against infringement.

  2. Business Opportunity: A trademark serves as a valuable intangible asset crucial for brand development. A successful trademark opens doors for financial prosperity and brand recognition. Companies like Nike and McDonald’s have capitalized on their trademarks through licensing agreements, earning significant royalties.

  3. Unique Identity: Registration gives your product global recognition, establishing a unique identity on an international scale. Registration is the initial step toward achieving this recognition.

  4. Alterations and Renewal: International trademark registration remains valid for 10 years from the registration date. Making alterations and renewals is straightforward, requiring only the submission of the same application form initially provided to WIPO for renewal purposes.

  5. Safeguards Your Brand in Export and Import: International trademark registration protects your brand from counterfeiting in both export and import scenarios. In the event of any violations related to import or export, you have the legal right to initiate legal proceedings to protect your brand.

Difference Between International Application in Each Foreign Country and Madrid Protocol

  1. International Application in Each Foreign Country

    • Involves filing separate trademark applications in each foreign country where protection is sought.
    • Requires adherence to the trademark laws and procedures of each individual country.
    • Often entails higher costs due to multiple application fees, attorney fees, and administrative expenses.
    • Processing times may vary significantly depending on the efficiency of each foreign country’s trademark office.
    • Requires ongoing management and maintenance of each individual trademark registration.

  2. Madrid Protocol

    • Allows for the filing of a single international trademark application that can cover multiple member countries.
    • Streamlines the registration process by providing a centralized application procedure through WIPO.
    • Reduces administrative burdens and costs associated with filing separate applications in each country.
    • Provides a more efficient and cost-effective method for managing trademark portfolios on a global scale.
    • Simplifies the process of making changes or renewals to the trademark registration through a single application process.
    • Offers a centralized mechanism for monitoring and enforcing trademark rights across multiple jurisdictions.

International Trademark Registration Cost

The processing time for each country varies, typically not exceeding a year and a half. If a trademark application is not dismissed within this timeframe, it is considered registered in the relevant country. The registration fees for processing an application under the Madrid System consist of three components:

  1. Application Fee: This fee is fundamental for registering the mark.

  2. Complementary Fees: These fees are associated with preparing the application for each contracting party (country) where the applicant seeks protection for their mark. In some cases, complementary fees may be the only individual charges.

  3. Supplementary Fees: Additional handling fees may be imposed by the office of origin to verify and send the application to WIPO. For instance, in India, the handling fee is set at ₹2000.

Book A Call
Book A Call