Overview of International Trademark Registration
Trademark registration is limited to territories. That is to say, for each country where you want to mark your presence you have to apply for separate trademark application. It is essential for you to proceed at speed. Any national trademark registration ends at the end of the country’s boundary and it does not allow its owner to entertain the rights of Trademark Registration outside that boundary.
The Madrid Protocol which was introduced in the year 1996 with the aim to register a mark under multiple nations. The Madrid agreement tells about the system of international trademark registration. All you have to do is file an application for International Trademark Registration through the trademark office of the applicant.
International trademark registration application under the Madrid Protocol must be recorded by the trademark applicant through the trademark office, known as the workplace of origin. If there should be an occurrence of Indian Businesses, the Office of Registrar of Trademark, India is the workplace of origin. The office of origin will process the trademark application and record it with the Intellectual Property Organization at Geneva.
If your trademark application is found perfect as per the norms, then your mark, logo, or word is ready to be recorded in the International Register and can be published in the World Intellectual Property Organization (WIPO) Gazette of International Marks. The International Bureau gives a certificate of international registration and tells nation contracting to the Madrid Protocol that the trademark is registered. The Madrid Protocol has set severe time limit of 12 and half years for issues which shall be raised by the designated offices.
International Trademark Registration
Benefits of International Trademark Registration
- Legal Protection
International Trademark registration legally protects any infringement of the particular trademark by third person. It is easy to prove the legal right in the court if the trademark is registered. Hence, before going through the legal process to fight against an infringement, it is important to ensure that the trademark i.e. the word, slogan or logo is registered.
- Business Opportunity
Trademark works as an intangible asset and plays a crucial role in the growth of your brand. A successful trademark provides your business an opportunity to earn money and fame. Businesses like Nike or McDonald’s has earned royalties via licensing agreement.
- Unique Identity
Globally your product gets recognition via international trademark registration. Registration is the initial step towards ensuring this.
- Beneficial For Online Operators
International Trademark Registration plays a crucial in the growth of e-commerce business. If you are involved in selling products online then somehow it paves the way for your product to be available to international consumers.
Once you have got recognition in the international market it becomes feasible for your trademark to gain popularity among masses. It is wise to obtain the International Trademark Registration as fast as possible so as to avoid any kind of confusion amongst the buyers.
Changes and Renewal
Once you have International Trademark Registration it becomes valid for 10-years from the date of registration. Though, it is easy to access changes and renewal facility. For the renewal purpose all you have to do is file the same application form which you have submitted to WIPO.
- Protects Your Brand During Export/Import
International Trademark registration safeguards your brand from counterfeits. In case of any infringement conducted during import or export you have the right to take legal action against such infringement.
To Meet the Registration Requirement for International Trademark Registration, it is important to have:
- A business in a Contracting Party
- Be domiciled in a Contracting Party
- Be a national of a Contracting Party
Note: In order to use Madrid System, you need to have a connection with one of its members (known as “Contracting Parties”). This connection will help you in determining your office of origin.
For instance, if you are a national of, or have a business in Australia, your association will be with Australia (an individual from the Madrid System) and in that case you must file your application via Australia's Intellectual Property (IP) Office.
What is the System of the registration of International Trademark?
The system of the registration of international trademark comprises of three very essential parts. Hence, we have given below the three parts in precise:
- Part I: Trademark Search
It is pertinent to mention that how trademark search is important before making an application for the registration of international trademark. It is suggested to ensure that there is no similar trademark already registered. The applicant can search for that on the WIPO’s Global Brand Database and conform that there is no similar trademark registered in any of the target markets where the applicant is planning to present his application form. This search can be on the basis of the following three factors:
1. The text used in the particular trademark
2. The image used in that trademark
3. The goods or Services class where it is to apply
- Part II: File Application for Registration
Once the trademark availability is verified then you can make an application for the registration of international trademark. The most significant prerequisite is that the trademark is either registered or applied for in the origin office (the home country). One can choose for the easy procedure of the international trademark registration and can apply through the Madrid System if they are native of the eligible country. The application shall be filed with the country of origin’s local trademark office and they shall forward to WIPO after duly verifying it. Then the further analysis is done by the WIPO office and the country’s institutions where it is applied for.
- Part III: Management of International Trademark
Once the registration of the international trademark is successfully done then its appropriate management is very important. The management of Trademark is very centralized and simple under the Madrid System. The rules are very clear and are properly specified together with the appropriate forms for each feature. The management of Trademark involves following aspect:
1. Renewal of the trademark for every 10 years
2. The E-payment of the fees
3. To expand the geographical scope by applying in more countries
4. Appointment of new representatives
5. Transfer of the Ownership
6. Cancellation of the trademark
Registration Procedure of International Trademark Registration
- Applying Through National Trademark Office (Office Of Origin)
Make sure that you are registered before filing an international application, if not, then file an application in the Trademark and IP office of the country. This ground level filing of an application is called Basic Trademark Application. Once you are done with the proceeding of Basic Trademark Application, you can apply for International Trademark with the help of the same office, which will later forward it to WIPO.
- Examination By WIPO
WIPO (World Intellectual Property Organization) goes through your application. When approved, your international mark is recorded in the International Register and distributed in the WIPO Gazette of International Marks. At that point, WIPO will send you an authentication of your international registration and tell the IP Offices in all the domains where you have applied to have your mark secured.
Do take note that the extent of assurance of a worldwide registration can't take place at this phase in the process. It is just decided after substantive assessment and choice by the IP/Trademark Offices in those domains.
- Examination By National Offices
The IP Offices of the regions will choose that where you need to ensure your mark, within the appropriate time limit (12 or 18months) after their enactment. WIPO will enlist the choices of the Trademark Offices in the International Register and notify you.
If an IP Office won't secure your mark, either completely or partially, this choice doesn't influence the choices of different Offices. You can challenge a refusal choice straightforwardly before this Trademark Office concerned under its legislation. If an Office acknowledges ensuring your mark, it will give an announcement of award of assurance.
This International Trademark is legitimate for 10-years. If you want, you can renew the registration at the end of 10 years.
Fees for international Trademark Registration
Under the Madrid System the fees that is applicable for processing the application for international trademark comprises of three elements:
- Basic application fees
this is basic for registering the mark.
- Complementary fees
For every contracting party i.e. country, the application is prepared for the jurisdiction where the applicant desires to protect his mark. In few cases, the complementary fees are the only individual fees.
- Supplementary fees
For each class of goods or service trademark this supplementary fees is charged. There may as well be certain handling charges that are imposed by the office of origin to verify and forward the application to WIPO. The handling charges in India are fixed at Rs. 2000.
Processing time in every nation varies, yet none takes longer than year and a half. In the event that the trademark doesn't get dismissed within this period, it is viewed as registered in that concerned nation.
Your application will get prepared in every domain you have picked. The authorities will educate you if the trademark has either been regarded legitimate or the registration has been rejected in their nation. A letter of refusal will contain data about the progressions required in the application or different purposes behind the refusal. What's more, a time period limit must be followed to finish the changes. Various nations would have various practices about what is satisfactory in the determination of goods and services.
Frequently Asked Questions
A system that governs International Registration of Trademarks
World Intellectual Property Organisation or WIPO will officially look at your trademark application. Though, each contracting party (nation/domain), in which you have applied, will have the chance to inspect the application under their framework. Inferring that you despite everything should manage various contracting workplaces in various nations.
Any individual or business entity having a real and effective industrial or commercial establishment.
Yes, India joined Madrid Convention in the year 2013.
Trademarks, copyrights, and patents secure different sorts of Intellectual Property (IP). A trademark commonly ensures brand names and logos. A copyright ensures unique imaginative work. A patent secures an innovation.