Global Brand Shield: Essential Trademark Registration
In the era of rising globalization, industries are now seen going beyond the national boundaries and so are their brands. In today’s world, entrepreneurs are inspired to take their products and services globally without any hitch in which International Trademark Registration Consequently, the brands and logos of the Corporates are being widely used internationally. With the international presence of Corporates, they are supposed to get their Intellectual Property Rights (IPRs) protected against any kind of infringement. One of the most important IPRs is Trademarks. Registered Trademark rights are intellectual property rights, that are considered different in each country or jurisdiction where they are obtained.
Trade mark Registration Chandigarh being territorial in nature, we need to file separate applications in each country where we seek Registered Trademark protection. In case, you / your entity plan to sell / market/ export its products outside India, to any other countries, then it is essential to register your trademarks in those countries. Your mark may be registered in India but as soon as it crosses the Indian borders, the aforesaid mark carries no protection. The Corporates expanding into other territories often realize the value of registering their trademarks abroad by the time, it is too late. Since then, they are already facing counterfeiters/imitators. The damages can prove very costly and detrimental to the growth of a business as a whole when it enters into global markets.
Now the next question which immediately comes in our minds is what do we mean by “international trademark Rights” It means a set of trademark rights that exist in a number of jurisdictions, each jurisdiction’s existence and enforceability are distinct and, in most cases, unrelated.
Do you need to register your trademark in each country?
No, you are supposed to register your mark in only those countries where you need protection, at present or in the future, due to the presence of your brand/logo there.
What are the ways to get International Trademark Registration in India?
There are two ways to get International Trademark Registration done, which we are going to discuss below:-
1. Filing of International Applications in each country where we seek protection:-In order to get an international trademark registration in any foreign country, an international application must be filed directly with each foreign country’s Trademark office, following that country’s laws and regulations.
Procedure:
Step 1: Apply to the appropriate National Trademark Office
Firstly you need to apply to the appropriate National Trademark Office. You must complete Form MM2 in order to apply to that national office. The application will be examined by the national office once it has been filed. If the submission is free of errors, they will forward your application to the World Intellectual Property Organization (WIPO) for worldwide review.
Step 2: Examination of trademark application by the WIPO
The WIPO will consider your application after it has been accepted by the national office. This assessment is primarily to confirm that the application is free of errors and that you are a genuine applicant who meets the prescribed requirements. After that it will be published in the WIPO’s International Trademark Gazette and thereafter, the application will then be delivered to the national offices of each country that has requested it.
Step 3: Examination of trademark application by the National Trademark Office
Now, the national trademark authorities of the relevant country will review your application for any flaws, as well as any potential IP conflicts with trademarks that have already been registered in that country.
A common aspect of the national procedure is to publish the application in their national gazette and provide other trademark holders a chance to express their concerns. The national office has one year to send a notification of provisional refusal if there are any issues with pre-registered trademarks — this time period can occasionally be extended to 18 months or more. If no notice of a provisional refusal is received, the trademark is approved, and your brand is now registered in that country.
2.Filing of International Application under the Madrid Protocol :- This is the alternative option to the direct filing of trademarks in each country. This option allows you to obtain trademark registration online within a large number of countries at the same time. The Madrid Agreement and the Madrid Protocol are two different international treaties that govern the system (Protocol). Under the Madrid Agreement, nationals of any country (covered under this treaty) can protect their trademarks, which are registered in their home country, in all other countries covered under this Agreement. Nationals of any country can get protection in other countries that are contracting parties to the Protocol based on a pending application or trademark registration in the country of origin, according to the Protocol.
WIPO is in charge of both the Madrid Agreement and the Madrid Protocol. Only the Madrid Protocol’s provisions apply to countries bound by both the Madrid Agreement and the Madrid Protocol.
Procedure:
The Madrid Protocol and the Madrid Agreement, govern the international trademark registration process system. A mark can be registered in numerous countries under the Madrid Protocol by filing a single application for international trademark registration with the trademark office of the applicant’s country. India recently adopted the Madrid Protocol in 2013.
Now you can easily file the online application for an international trademark with the office of the Registrar of Trademarks in India at www.ipindia.gov.in, in the prescribed manner. On filing, the Registrar will review the application and after verifying the documents, will process the application and file it with the International Organization for the Protection of Intellectual Property in Geneva. Thereafter, WIPO examines the trademark application, and if it is deemed to be appropriate, then the trademark registration is registered in the International Register and published in the WIPO Gazette of International Marks.
Thereafter, the International Bureau issues a certificate of the international trademark registration process and notifies each of the Madrid Protocol countries about the applicant’s trademark. At the same time, under the Madrid Protocol, any country has the power to decline the mark’s protection and notify the Bureau of its objections within 12-18 months.
Any opposition to the trademark’s registration must be submitted to the International Bureau by the respective country in the prescribed manner and time period. If none of the countries refuses to register the mark, the mark’s protection in each country is the same as if it had been registered by that country’s Office only.
An international trademark is registered for a time period of (10) ten years once it is registered under the Madrid Protocol. International trademark registrations can be renewed directly through WIPO or through the concerned office of origin on the expiry of the aforesaid ten-year period.
Now you would be thinking about the basic requirements for filing the International Trademark Application under Madrid Protocol:-
Following are the basic and key requirements for filing the application:-
- You must be an Indian National and an Indian Resident or have commercial establishment in India.
- The trademark you are seeking to register internationally must have been applied or registered in India.
- You need to select one or more Madrid Protocol countries in which you intend to make registration.
Other points of consideration in International Trademark Registration:-
- By filing a single application under the Madrid Protocol, several countries may be designated which are members of this system.
- The fees will depend based on the number of classes and countries designated.
- The application can be filed in any of the three languages: English, French, or Spanish.
- The government filing fees for each foreign country must be paid in India in a single currency, the Swiss Franc (CHF).
- An international trademark registration under the Madrid protocol is dependent on the corresponding Indian application for a period of five years from the date of the international application.
- If you wish to obtain registration in a country that is not a member of the Madrid Protocol, a separate national trademark application has to be filed directly in that respective country.
Conclusion:-
In the current scenario of globalization where brands/ logos/ trade names are finding no barriers due to global marketing trends, the corporates are always at the risk of infringement of their brands in global markets since the trademark registration works in jurisdictions and does not go beyond the set boundaries. Then the entrepreneurs need to get protection for their brand names internationally as well so that their business expands without any risks or losses on account of infringements/cheaters. India’s Mobile phone manufacturer “Micromax” has got international trademark registration online for its trademark “Micromax” in over 110 countries, out of which many registrations attribute to Madrid Protocol. The Madrid protocol is a cost-effective and easy-to-use platform for all those business entrepreneurs who wish to expand globally.
Frequently Asked Questions
It means a set of trademark rights that exist in a number of jurisdictions, each jurisdiction’s existence and enforceability are distinct and, in most cases, unrelated.
Trademark registration is territorial in nature.
In the era of rising globalization, industries are now seen going beyond the national boundaries and so are their brands. In today’s world, entrepreneurs’ are inspired to take their products and services globally without any hitch. Consequently, the brands and logos of the Corporates are being widely used internationally. With the international presence of Corporates, they are supposed to get their Trademarks protected against any kind of infringements.
Yes, as per conventional approach, we need to file separate applications in each country where we seek trademark protection.
The Corporates expanding into other territories often realize the value of registering their trademarks abroad by the time, it is too late. Since by then, they are already facing the counterfeiters/imitators. The damages can prove very costly and detrimental to the growth of a business as a whole when it enters into global markets.
No, you are supposed to register your mark in only those countries where you need protection, at present or in future, due to the presence of your brand / logo there.
There are two ways to get International Trademark Registration done:-
- Filing of International Application in each country where we seek protection.
- Filing of International Application in India under the Madrid Protocol
Procedure:
Step 1: Apply to the appropriate National Trademark Office
Firstly you need to apply to the appropriate National Trademark Office. You must complete Form MM2 in order to apply to that national office. The application will be examined by the national office once it has been filed. If the submission is free of errors, they will forward your application to the World Intellectual Property Organization (WIPO) for worldwide review.
Step 2: Examination of trademark application by the WIPO
The WIPO will consider your application after it has been accepted by the national office. This assessment is primarily to confirm that the application is free of errors and that you are a genuine applicant who meets the prescribed requirements. After that it will be published in the WIPO’s International Trademark Gazette and thereafter, the application will then be delivered to the national offices of each country that has requested it.
Step 3: Examination of trademark application by the National Trademark Office
Now, the national trademark authorities of the relevant country will review your application for any flaws, as well as any potential IP conflicts with trademarks that have already been registered in that country.
A common aspect of the national procedure is to publish the application in their national gazette and provide other trademark holders a chance to express their concerns. The national office has one year to send a notification of provisional refusal if there are any issues with pre-registered trademarks — this time period can occasionally be extended to 18 months or more. If no notice of a provisional refusal is received, the trademark is approved, and your brand is now registered in that country.
Procedure:
The Madrid Protocol and the Madrid Agreement, govern the international trademark registration system. A mark can be registered in numerous countries under the Madrid Protocol by filing a single application for international trademark registration with the trademark office of the applicant’s country. India has recently adopted the Madrid Protocol in 2013.
Now you can easily file the online application for international trademark with the office of the Registrar of Trademarks in India at www.ipindia.gov.in, in the prescribed manner. On filing, the Registrar will review the application and after verifying the documents, will process the application and file it with the International Organization for the Protection of Intellectual Property in Geneva. Thereafter, WIPO examines the trademark application, and if it is deemed to be appropriate, then the mark is registered in the International Register and published in the WIPO Gazette of International Marks.
Thereafter, the International Bureau issues a certificate of international trademark registration and notifies each of the Madrid Protocol countries about the applicant’s trademark. At the same time, under the Madrid Protocol, any country has the power to decline the mark’s protection and notify the Bureau of its objections within 12-18 months.
We can file applications in the countries which are covered under the Madrid Agreement/treaty.
WIPO is in charge of both the Madrid Agreement and the Madrid Protocol.
At present, 130 countries fall under the Madrid Protocol.
Year 2013.
An international trademark is registered for a time period of (10) ten years once it is registered under the Madrid Protocol.
Yes, an International trademark registration can be renewed, either directly through WIPO or through the concerned office of origin on the expiry of the aforesaid ten-year period.
Following are the basic and key requirements for filing the application:-
- You must be an Indian National and an Indian Resident or having commercial establishment in India.
- The trademark you are seeking to register internationally must have been applied or registered in India.
- You need to select one or more Madrid Protocol countries in which you intend to make registration.
Other points of consideration in International Trademark Registration:-
1.By filing a single application under the Madrid Protocol, several countries may be designated which are members of this system.
2.The fees will depend based on the number of classes and countries designated.
3.The application can be filed in any of the three languages: English, French, or Spanish.
4.The government filing fees for each foreign country must be paid in India in a single currency, the Swiss Franc (CHF).
5.An international trademark registration under Madrid protocol is dependent on the corresponding Indian application for a period of five years from the date of international application.
If you wish to obtain registration in a country which is not a member of the Madrid protocol, separate national trademark application has to be filed directly in that respective country.
The Madrid protocol is the cost effective and easy to use platform for all those business entrepreneurs’ who wish to expand globally.
India’s Mobile phone manufacturer “Micromax” has got international trademark registration done for its trademark “Micromax” in over 110 countries, out of which many registrations attribute to the Madrid Protocol.
