International Trademark

Trademark is a defensive and expansive strategy for businesses round the globe. With the advancement in the globalization and online presence of marketplace, it is not possible to keep the record of information being made public on the social media and internet. The presence of new generation entrepreneurs and competitiveness has resulted in a "who gets there first" mentality. Besides these factors, there are many other factors which have made it mandatory for businesses to protect their brand globally as well as enjoy the benefits from international expansion. International trademark registration is necessary from the view of an entrepreneur as not doing so would definitely weaken the impact of your trademark causing business economic losses and loss to the goodwill as well. Another benefit of international trademark is that it would facilitate licensing trademark right to other entities, which would help in franchise operations. 

Trademark rights are territorial in nature and are granted on country by country basis. It can protect your business in your country alright but not overseas. To overcome this problem and ensure your trademark is protect not just in your country but overseas as well, International Trademark is the answer. There is this example of a US based Pinterest who lost its right to use its name or trademark in the country of Europe as a London based Premium Interest Ltd. because it could not register its trademark timely. One can only imagine the loss the company had to incur because of failing to register trademark timely.

Madrid protocol came into operation in 1996 and the system of international trademark registration is governed by this protocol. There are 94 countries in the Madrid protocol including USA, UK, France etc. Madrid protocol is an international system for registration of trademarks. According to this protocol, a mark is secure protected in those countries and jurisdictions which are contracting parties to the protocol based. 

Advantages & Disadvantages of Madrid Protocol:

There are certain advantages and disadvantages of the Madrid Protocol. Advantage is that the applicant is provided a centralized and cost-effective registration process. Not only registration, changes in the details of the right-holder can be made with one document sent to the international bureau. Applicants can also add successive designated member countries at a later date under the same registration. 

Disadvantage being that it takes 12 to 18 months to get trademark registration. And another is that the system extends only to the protocol countries.

To proceed further with the international trademark registration, it is necessary to ensure that no specific trademark is already registered. Any applicant can search on WIPO’s (World Intellectual Property Organization) Global Brand Database for any trademark already registered in the market where the applicant desires to apply. Text used in the trademark, image used in the trademark and class of goods or services to be used can be the variables used to base the search.

There are other prerequisites for applying the international trademark:

• First one would be that one must have applied and registered for the same trademark in one’s respective country of origin’s intellectual property office. That would be the country from which the application is being filed.
• There is another prerequisite that the applicant must have some connection with at least one party contracting with the Madrid System. The said country with which the relation is to be established will be the place from which they apply, their origin office. The relation can be described by the way that the applicant is the contracting party’s domicile, the applicant can be contractor’s resident, or the applicant has a business in the contracting party and such business can be any industrial or commercial establishment, real or effective.  

Applicant must choose more than one country where they desire to protect this trademark.

• Step 1: Application Filing

The registration application is subjected to be filed via M2 form. All the pertaining information of this application must be filed carefully and must match with registration at the Indian Trademark Office. All the information like names and description of the mark, class of goods/services, priority date and other particulars and then are verified to confirm that it matches with that of the basic application. If it matches, then the Indian trademark office would issue a certificate mentioning the date of international application and would forward the application to World Intellectual Property Office. Indian trademark office charges a fee of minimal Rs. 2000/- for this process.  

• Step 2: Certification and submission to the WIPO

World Intellectual Property Organization will conduct a formal and intensive examination to check the applicant’s compliance with the requirements of the Madrid Protocol and other regulations. If they find any discrepancies, they will be informed to the applicant and a three months’ time will be granted to rectify the same and if the applicant fails to rectify such discrepancies in the given time period, the application will be deemed to be abandoned. And if it complies with the requirements of Madrid protocol and other information provided is also is in compliance, the same will be recorded in the International register and published in the WIPO Gazette of International marks. They now will send a notification to trademark offices in the countries according to the applicant’s request to extend the protection of the mark. And also, will send a certificate of International Registration to the applicant. This is not the registration of trademark in the desired countries but an integral part of the whole process.

• Step 3: Further Examination

Then a substantial examination will be done by the offices of the respected countries on the basis of their laws and relevant rules in the manner as an application is filed directly. And would inform WIPO within a time span of 12 to 18 months. Then the similar process will be followed like that of when applied for in India. WIPO would record the decision whether approved or denied and then would convey it to the applicant.  If approved, then the statement of grant is good for the validity of 10 years. And in case it is denied, WIPO will not intervene in the subsequent proceedings between the trademark office of the designated member country and the applicant.

Once the trademark is successfully registered, its effective management is crucial. That includes renewal of trademark in every 10 years, payment of requisite fees through electronic mode, expansion of geographical range by filing in more countries, transfer of ownership transfer, appointment of new representative etc.