International Trademark Registration
Trademarks have provided for means for many brands to help protect their brands, unique ideas and smart infographics. Many a time, a brand does well in the local markets and wants to expand their business globally.
This presents businesses with a unique problem. Trademarks registered with the local authorities are only valid locally. This means a company using a mark in one country say India, cannot claim to have the same Trademark in another country say, Sri Lanka. Therefore, a trademark registered under the regulations of the Trademark laws in India is only applicable in the territory of India.
Generally, whoever registers the trademark first owns it, therefore, it is advisable for businesses to register the trademarks in all countries they see as a potential market. Many companies expanding their operations to a global scale face this issue and they realize the importance of registering an International Trademark very late. It is a common occurrence to see counterfeiters as well as imitators of a particular brand operating in other countries. Sometimes, your brand might also be in violation of a trademark in that country since your registered trademark only works in your country. This could turn out to be very detrimental to a company’s business strategy as well as their export strategy. It could be very damaging for a company to invest resources in a brand promote it locally only to find out that the brand cannot be used in another country, causing a huge loss in investment.
In order to avoid these issues and provide a one-stop solution for the issue of registering a trademark across various countries, the concept of an international trademark was introduced. The international trademarks were introduced under the Madrid System for the international registration of marks. The Madrid System has been implemented in accordance with the Madrid Agreement Concerning the International Registration of Marks of 1891, as well as the Protocol Relating to the Madrid Agreement (1989). This Madrid protocol basically lays the foundations along with the rules and regulations for registering a trademark across the various participating nations. India joined the Madrid Protocol on the 8th of July, 2013.
Benefits of International Trademark
The one consolidated registration of trademarks under the Madrid protocol has basically provided individuals as well as businesses many benefits which include better portfolio management as well as cost savings. Let’s look at some benefits your business will enjoy by using an international trademark registration procedure under the Madrid Protocol.
- Exclusive rights to commercialize and market products in a particular country.
- Provides the company with a solid platform to fight against counterfeiters.
- Opportunity to license the trademark to other firms and help expand the company’s franchising/merchandising and other efforts for improving the branding efforts .
- Managing renewals, change in address, change in ownership is easier as well as more cost-effective.
- The provision of adding more countries to the trademark list can be availed if the company plans to deploy their products in new markets.
Requirements for obtaining an International Trademark Registration
- Applicant should be a resident of India or should have a domicile of India/ have an effective commercial establishment in the country.
- The person/business should have a national trademark application or registration.
- The applicant in the international application must choose one or more other member countries of the Madrid Protocol, where the applicant wants to protect his trademark.
International Trademark Registration under Madrid Protocol
The application for the international trademark under the Madrid Protocol, company/organization/ individual should first file a trademark in the respective country. For eg. your place of origin is India, you have to first file a corresponding trademark with the Office of Registrar of Trademark, India. Once the trademark is filed with the Indian office (labelled office of origin) with is then forwarded by the office of origin with the Intellectual Property Organization at Geneva.
Under a single application in accordance with the Madrid Protocol, several countries will be allocated for a particular trademark from the list of participating members under the protocol. The fees for filing the trademark will depend on the number of countries and the number of classes allocated to the applicant.
Upon filing the application from the office of origin, all designated members countries will examine the mark and will approve it for forwarding for registration. If the trademark is seen to be fit, it will be recorded in the international register and will be published in World Intellectual Property Organization (WIPO)
Time Frame for International Trademark
The entire process for registering an international trademark including a Trademark in the office of origin (Registrar of Trademarks) will take about 18 to 20 months and an additional 18-20 months for registration with the international body.If you already have a registered trademark and just want to extend in other countries it will take onlt 18 – 19 months for a registered trademark in member countries.
An international Trademark is valid for 10 years.
Members Madrid Protocol
As of this day, There are 102 countries who comply with the regulations and are a party to the Madrid Protocol. These are listed below:
- African Intellectual Property Organization
- Antigua and Barbuda
- Bosnia and Herzegovina
- Brunei Darussalam
- Czech Republic
- Democratic People’s Republic of Korea
- European Union
- The Gambia
- Iran (the Islamic Republic of)
- Lao People’s Democratic Republic
- New Zealand
- The Republic of Korea
- The Republic of Moldova
- Russian Federation
- San Marino
- Sao Tome and Principe
- Sierra Leone
- The Syrian Arab Republic
- The former Yugoslav Republic of Macedonia
- United Kingdom
- United States of America
- Viet Nam