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Kandarp Vanita
| Updated: 16 Apr, 2021 | Category: Trademark

Things to Consider before Obtaining a Foreign Trademark Registrations

Obtaining a Foreign Trademark Registrations

Anything which evidently distinguishes a product or any service of a company from the other companies in the concerned jurisdiction or in the market, then it is generally called as a trademark or a service mark correspondingly.

The word “Trademark” is in general used in differentiating the goods or products of a particular company from other companies; while the term “Service Mark” is generally used in distinguishing service of any service providing company from the services of other organisations in the same marketplace.

Thus, a trademark or service mark is a distinctive mark, wording or word, a signature, any figure or logo or any other indication, which can unambiguously distinguish that product or service of a company in that particular nation or international jurisdiction. We can protect our trademark in foreign countries by registering it so in this article we will read about things to consider before obtaining foreign Trademark registrations.

Considerations for Obtaining Foreign Trademark Registrations

According to the World Intellectual Property Organization (WIPO), approx four million trademark applications on average are filed every year globally. In U.S., the trademark rights are formed through the use of a mark and it is developed by obtaining a Federal Registration i.e. with the United States Patent and Trademark Office (USPTO).

Majority of the U.S. brand owners are not aware that their precious trademark rights discontinue at the U.S. border. Hence, for the purpose of getting protection outside U.S., the trademark rights are required to be obtained independently across the territories.

Moreover, the eligibility for foreign trademark registrations and the criterion for infringement of trademark differ in different country. Consequently, companies that have probability for growing outside the U.S. need to actively plan and obtain protection for trademark in foreign territories that is relevant for their particular industries.

As more brands are continuing to expand their businesses overseas, it is essential to know the details of foreign trademark registration. The major key points that should be in mind while applying for foreign trademark registration are given below:

Foreign Trademark Registrations

1. Register the Trademark in the U.S

Before applying for foreign trademark registrations, the applicant must first register his trademark in the U.S. and this can be done through the U.S. Patent and Trademark Office (USPTO).

The foreign trademark registrations application can be completed directly from the USPTO website. The foreign trademark registration in the U.S. first shall give stronger grounds to register the trademark in other countries.

2. Work with Due Diligence

It is significant to be on familiar terms with how this method operates in one particular country in relation to the U.S. with the purpose of protecting the trademark in another country.

It is important to know and familiarize with the trademark rules and other guidelines of the countries where foreign trademark registration is applied for. Few of the great research resources shall include the WIPO and The International Trade Administration 

Read our article:Simplified Instructions to the Trademark Search Process

3. Use the Madrid System

The Madrid System is the single stop way out for foreign trademark registrations and administering the trademark worldwide.

Under this Madrid Agreement, the applicants applying for foreign trademark registration can submit just one application to protect their work within a federation of countries. The Madrid Union is the combination of different countries that recognizes these international trademarks.

The filing of the MM2 form, which is available on the WIPO website, can be applied for international trademark protection. Then, a hard copy to the U.S. office can be submitted. Currently there are 113 countries offering protection under the Madrid Agreement, including France, Italy, Australia, the European Union and China

The applicant can choose particular countries or can also choose to protect his trademark in all the 113 countries. The applicant has to make the payment of the processing fee for foreign trademark registration with the WIPO, as it is less costly in comparison to the filing of an individual application in each country.

4. Hire an Attorney

In case the applicant is interested in foreign trademark registrations not covered under the Madrid Agreement as there are some countries not protected under the Madrid Agreement like Canada, Saudi Arabia and South Africa. In such countries, the applicant can consider seeking guidance from an attorney of that country in which he is planning to register trademark. According to the recommendation of USPTO[1] an attorney can be searched through the International Trademark Association.

5. Consider Foreign Translations

It is very important for the applicants to carefully consider the foreign translations of the words while applying for foreign trademark registrations in other language. Thus, the applicant has to ensure and consider the foreign translation so as to avoid any kind of mistake of whatever slogan or term the applicant is using in that particular country.

6. Don’t Delay

The most advisable statement is that it is best not to delay in filing the foreign trademark registration applications, mainly if the intention is to do business overseas in the short term.

Requirements for Obtaining Foreign Trademark Registration

The three main requirements for obtaining foreign trademark registration in India are:

  • The applicant must be an India national or domiciled in India or must have genuine and valid commercial establishment or business in India.
  • The applicant ought to have an Indian national trademark application or must have a registration of a trademark with Indian Trade Marks Registry. Hence, this national trademark application or registration shall be used as the basis while applying for international application. The international application will have the same trademark, list of goods and services as was mentioned in the national trademark application.
  • In the international application, the applicant should choose one or more than one member countries from the Madrid Protocol, where the applicant wishes to give protection to his trademark.

Conclusion

It is important for the applicant to consider the global issues and confirm with the trademark accounts for probable growth while choosing a trademark protection in a particular country.

Therefore, the trademark owners should examine the product, the market, the regulation and laws of that country thoroughly before applying for foreign trademark registration.

Read our article:How Can You Apply For Online Trademark Registration in India?

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Kandarp Vanita

Kandarp Vanita has done masters in Corporate and Commercial Law from WB National University of Juridical Sciences. She has 3 yrs of experience in drafting legal documents & dissertations. Being a curious reader, she is also passionately into providing legal backups and comprehensive understandings in every aspect of Law to the firms.

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