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Mohi

Mohi | Updated: Mar 27, 2020 | Category: Trademark

International Trademark Registration Process

Each nation has its own laws regarding the registration of the Trademark, and accordingly, they function. Registering a trademark in each country is quite a complicated task as each country has different laws governing the registration of the Trademark in that country. A separate application needs to be filed for each country wherever someone wants to register their Trademark. If somebody wants to launch their products in the international market or if someone wants to do business globally, it is very necessary for them to register their products in those countries. Usually, Whoever first registers their mark owns it. Therefore, it is necessary to register trademarks in all countries where the company is considering to do business. National trademark registration is valid within the boundaries of the country. So, it is must to do international trademark registration, whoever is considering to use their mark in other countries. WIPO Regulates International Trademark registration process through Madrid System. 

Benefits of International Trademark Registration:

1. Registering an International Trademark gives confidence to business globally without infringing the rights of others. So, ultimately it saves from the consequences which may be faced by a company in case of non-registration of Trademark internationally.

2.  International Trademark  gives the company an exclusive right to commercialize its products in those markets.

3. it provides the company enjoys exclusive rights over its most valuable business assets.

4. International Trademark Registration also provides the opportunity to license the Trademark to others globally or can also do the company’s franchising or merchandising strategy.

International Trademark Registration under Madrid System

Under the Madrid System, International Trademark registration can be filed. Many countries have signed Madrid protocol for international registration of mark including India also. The system makes it possible to protect a mark by obtaining an international registration that has effect in each of the designated Contracting Parties(the term Contracting parties means, whoever is member of Madrid protocol).

The Madrid system is a cost-effective procedure for the international registration of trademarks for the registration of a mark in other countries.  These countries are members of the Madrid Protocol

For filing an international application under the Madrid Protocol, a trademark application must be filed in India also according to Indian Laws. Under this Protocol, in a single application, Trademark can be applied in several countries.

Essentials for filing International Trademark Registration:

  1. Anybody can file an application for International Trademark Registration.  It can be filed through a legal entity also.
  2. The applicant applying for International trademark registration must have a personal or business connection with the minimum one of the contracting parties of the Madrid system. 
  3. The applicant must be the domicile and citizen of the contracting party.
  4. The applicant must have a business in the contracting party, either real or effective; industrial or commercial establishment. 
  5. Under the Madrid Protocol, its must file an application in the Office of Origin (The Office of origin means the trademark office of the Contracting Party with which the applicant for international registration has the necessary connection i.e. through establishment, nationality or domicile is eligible to  file an international application)
  6. International Trademark applications can be filed in English, Spanish or French irrespective of which treaty or treaties governing the application.
  7. An application for international registration can be filed in only contracting parties under the Madrid protocol in which protection is sought.
  8. International application for Trademark registration can only be filed in respect of goods and/or services covered under the basic application or registration applied in the office of origin.

Benefits of filing international Application under Madrid System:

1. By filing a single application, International application for trademark registration can be filed instead of filing a separate application in each country. This uncomplicated process of applying ensures efficiency where one can be assured of protection globally.

2. Each country has its own language, but according to the Madrid Protocol, an application can be filed in English, French or Spanish only. It being a centralized system eliminates language barriers etc. which makes registration comfortable.

3. It saves a lot of time and cost by filing a single application online; otherwise, each country has its own laws. It is a quite convenient method of registering a trademark. Filing just one application ensures the elimination of unnecessary bundle of applications.

4. Under the Madrid system, one can register and manage his Trademark globally as the Madrid system represents 80% world trade.

Fees for International Trademark Registration

Processing the application for Trademark registration under the Madrid system would require the following costs:

  • The basic fee;
  • Additional charges depending upon the class of goods and services applied;
  • Complimentary fees depending upon the jurisdiction one wants to seek protection  for;
  • After one registers a trademark internationally, additional charges may be required if one wishes to expand, renew or modify the trademark portfolio.

Note: – If the application is filed in the IP office of the Least Developed Country (LDC), then the basic fee will be reduced significantly. 

Fees vary from country to country and number of classes for which mark has been applied. 

It can be calculated online by using this link and specifying details:

International Trademark Registration Process:

For registering an international trademark under the Madrid system following 

steps are followed: 

International Trademark Registration Process

Step 1 Filing the application-

First of all, one has to file an application in the Home IP office(Forex. India). Either Trademark should be already registered or have filed an application. Then need to submit an international application through the same IP office. Trademark registry office will cross-check the application and eligibility of the applicant. If the International Application is not proper deficiency is there then Trademark Registrat send an email regarding the same to the applicant and applicant has to reply for the same with all the supportive documents. If the application is proper, then Trademark registry certifies and forward it to WIPO. The fees would range according to the number of countries and classes mentioned.

Step 2 Examination by WIPO-

WIPO then examines the forwarded international application. This formal examination is to check whether the application complies with the requirements. In case any irregularity is found, then the same has to be rectified within the stipulated time by the applicant.

Step 3 Publication by WIPO

Once the examination is completed and no irregularities are found or if the inconsistency found earlier has been rectified within the stipulated time, the application is published by WIPO. WIPO will then send a certificate of the international registration to the applicant, and the IP offices of the countries applied for are also intimated.

Step 4 Examination by IP offices of the contracting party

The decision of the application by the designating country must be notified to WIPO within the time limit, i.e., 12 to 18 months. The decision mentioned above is recorded in the international register, and then the applicant is informed about the decision.

CONCLUSION 

A registered trademark will set your company apart, and it would indeed be a great idea to register the Trademark internationally. One can track the status of the online application using the Madrid monitor. It provides the status of the documents processed by WIPO. An International trademark is valid for ten years from the date of registration.

Still, just because you have registered your Trademark doesn’t protect you from people trying to steal your Trademark, it gives you the right to prosecute a person who violates your Trademark. Taking the help of an attorney would be invaluable.

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Mohi

Mohi

Advocate Mohi Kumari has got 9+ years of experience in practicing law independently all over India. She has completed her Master in Laws from Rajiv Gandhi National University Of law, as well she has done Post Graduate diploma in Cyber Laws from Asian School of Cyber Laws and Diploma in Corporate Laws from Bharati Vidyapeeth Deemed University.


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