International Trademark Registration

International trademark registration is one of the most important things when your brand becomes popular in the global markets. The international registration of the trademark which protects the similar and unauthorized use of your registered trademark in the different jurisdictions.

In the recent year the well known brand Patanjali has achieved the highest number of the trademark registration for their products globally. Now, the Indian company has become a global market competitor . The various popular brands were commonly registered in various countries in order to improve their trade and capture the highest market place in the world. Commonly the international trademark registration is moved with the Madrid systems and national filings. In this method we can safeguard our trademark, our brand value and reputation globally while operating it from India.

What is a trademark registration?

Trademark registration serves as a pivotal step in securing territorial authorization, protecting your unique design, symbol, word, or logo from unauthorized or illegal use by third parties. This protective measure, however, is limited to the precise geographical confines of the country where the trademark is officially filed. By obtaining a trademark, you establish a legal barrier, fortifying your brand identity and mitigating the risk of infringement within the designated jurisdiction. This strategic move not only bolsters your intellectual property rights but also reinforces brand recognition and trust among consumers. It is crucial to recognize that the efficacy of trademark protection extends exclusively to the territorial boundaries outlined in the registration process, emphasizing the need for comprehensive global strategies for businesses with international reach.

What is an International Trademark?

International agreements play a crucial role in facilitating the protection of intellectual property worldwide. The Madrid Agreement of 1891 and its 1989 Protocol significantly aid in obtaining trademark protection across multiple jurisdictions. Together, they form the Madrid System for the International Registration of Marks, offering an efficient way to secure trademark rights in various countries simultaneously.

With this system, an “international” application can be filed, designating any or all Madrid member states. The resulting registrations are then individually effective in each designated state, mimicking the national filing process. Any country that is a member of the Paris Convention for the Protection of Industrial Property can join the Madrid Agreement and/or Protocol, giving states the flexibility to adhere to either or both treaties. In 2013, the Government of India acceded to the Madrid Convention, which provides for the filing of international applications from India to the contracting parties through the Office of the Registrar of Trademarks.

Registering your trademark with the Indian Trademark Office gives you trademark protection in the whole of India, but does not protect your trademark in other countries thus, making the international registration crucial in case of need for protection in other countries.

When should you opt for Foreign Trademark Registration ?

If your brand value reaches the utmost growth in the global markets. For securing the brand’s intellectual property right and safeguarding your brand’s product from the similar trademarks you will opt for the foreign trademark protection for your brand. Initially you shall obtain the trademark in your home country. While coming to the international purview it is mandatory for securing your business worldwide. For the same you should mandatorily register your brand in different jurisdictions.

1. When do you start establishing your business in a Foreign Country ?

There are a lot of ways to establish your business in a foreign country. For the initial if you are moving into the foreign markets for increasing the growth of your brand. The best way to cover your product is by giving a popular advertisement about the product which will be an initial stage for reaching your business. The international requirement for establishing your brand which needs the trademark registration for the targeted jurisdiction. Wilen obtaining the trademark in the targeted country which became the protector for your business.

2. When you start exporting outside India

For extending your business growth and activities, you should make your brand familiar in global markets. The global market reaches which helps to improve your business activities and growth outside India. While exporting your brand the foreign trademark registration which helps to protect the intellectual property of the product. For the exportation of your goods and services, the trademark certification for the product is essential for the exportations to the foreign markets. While exporting your brand which increases your profits in the global markets.

3. When you start promoting your product or service in abroad

Promoting your products or the goods and services abroad is not a simple task. Basically it all starts with the market researchers to analyze the specific characteristics of your target country. The originality and easy ability to access the local markets will be the key factors for your promotions of the goods and services. It is important, before promoting your products or the services in abroad.

4. When do you start franchising your brand abroad ?

If the brand was introduced in the foreign markets in the respective counties. The next step of the business plan is to start franchising your brand abroad. At that time the trademark registration in the franchised country will be necessary for the protection of such franchises of your brand. Without the foreign trademark registration the brand shall not extend their franchising their brand in the targeted country. So it is mandatory for registering your trademark for starting the franchising of your brand and businesses in the targeted foreign country.

Advantages of filing international applications:

For the validity of the indemnity agreement it should necessarily focus on the certain things,

1. Global Brand Protection:

International trademark registration allows businesses to protect their brand across multiple countries with a single application, providing a comprehensive level of global protection.

2. Consistency and Uniformity:

A unified international trademark application helps maintain consistency in branding across different markets, reinforcing the brand’s identity and message.

3. Cost Efficiency:

Filing a single international trademark application can be more cost-effective than filing individual applications in each country. It streamlines the process and reduces administrative and legal expenses.

4. Time Saving:

International trademark systems (the Madrid System) provide a centralized and simplified process for filing and managing trademarks in multiple countries. This can save time compared to dealing with the complexities of individual national systems.

5. Streamlined Management:

Centralized management of international trademarks simplifies the renewal, assignment, and maintenance processes. Changes to the registration, such as updating ownership information, can often be handled through a single application.

Who can file an International Application?

An international trademark application can be filed by an individual, legal entity, or organization that is a domicile or nationality to a member country (India) of the international trademark system. Typically, the applicant must already have a trademark application or registration in their home country, known as the “home application” or “basic application/registration.”

How to register an International Trade Mark?

There are two ways to apply for an international trademark registration.

(1) Separate Trademark Application in Each Foreign Country:

To get an international trademark in a foreign country, you need to submit an international application directly to the trademark office of that country, adhering to its specific laws and regulations. If you seek trademark protection in multiple foreign countries, separate trademark registration applications must be filed for each country due to the uniqueness of each country’s intellectual property rules.

Procedure:

Step 1: The initial stage of the process is to apply to the relevant National Trademark Office using Form MM2. Your application will undergo examination by the national office, and if it is error-free, they will send it to the World Intellectual Property Organization (WIPO) for a global review, a process that usually takes around two months.

Step 2: WIPO reviews your application after approval by the national office, ensuring it meets requirements and is error-free. Once accepted, your application is published in the WIPO’s International Trademark Gazette and sent to the national offices of the requested countries.

Step 3: In each requested country, the National Trademark Office examines your application, similar to the process of registering a national trademark. They check for flaws and potential conflicts with existing trademarks, often publishing your application for others to review. If any issues arise, the national office has up to a year (sometimes more) to send a provisional refusal notice. If no issues are raised, your trademark is approved, providing protection in that specific country.

(2) International application under the Madrid System

The most common way to file an international trademark application is through the Madrid System for the International Registration of Marks, administered by the World Intellectual Property Organization (WIPO).

Procedure:

Step 1: National Registration

International registration relies on the ongoing effectiveness of local registration for five years. If the local registration expires or the TM application is rejected, withdrawn, or treated as abandoned within five years, the international registration loses protection.

Step 2: International Application

An international trademark application must specify one or more countries where protection is sought, with the option to add more later. Only countries party to the same treaty can be designated, and the office of origin cannot be designated in the same application.

Designation of a country depends on whether it is governed by the Agreement or the Protocol. If both treaties apply, the Protocol takes precedence. Applications can be filed in English, French, or Spanish, unless the office of origin limits the choice.

Fees for filing include a basic fee, supplementary fees for additional classes, and complementary fees for each designated country. However, a Protocol member country can replace the complementary fee with an individual fee.

Step 3: Verification

Upon receiving an international application, the registrar ensures compliance with the Madrid Protocol’s requirements before forwarding it to WIPO. After verification, WIPO transfers it to the relevant foreign government.

Step 4: International Registration

The International Bureau checks formalities. If no issues are found, the mark is recorded in the International Register, published in the WIPO Gazette, and notified to designated countries. Substantive matters are determined by each country’s trademark office under its laws.

Step 5: Grant or Refusal of Protection

Each designated country issues a statement of grant of protection. If substantive provisions are not met, the country can refuse protection, communicating the decision to the International Bureau within 12 months (extendable to 18 months for Protocol members). The refusal is recorded and published.

Step 6: Effects of Registration

Protection in designated countries is effective from the registration date. If no refusal is issued or if a withdrawn refusal, protection is the same as a direct deposit with the country’s office.

Step 7: Duration and Renewal

An international registration is valid for 10 years and can be renewed for additional 10-year periods by paying the required fees.

Step 8: Modifications and Transfers

Protection can be limited, renounced, or transferred in relation to designated countries and goods or services.

What documents are required to register an International Trademark?

A business’s or a registered user’s proof
The applicant’s PAN card and Aadhar card
Logo details
Registration as an MSME
Trademark application number or trademark registration certificate (if the trademark is pending in India).

Why is international trademark registration required ?

Enhanced Credibility:

A globally recognized trademark reinforces the credibility and reputation of the brand. Consumers may perceive international trademark registration as a sign of commitment to quality and professionalism.

Easier Enforcement of Rights:

Enforcing trademark rights becomes more manageable when dealing with international infringement cases. With a registered trademark, legal actions can be taken under international treaties and agreements.

Flexibility in Choosing Countries:

Businesses can choose specific countries in which to seek trademark protection based on their market strategies and priorities, allowing for a tailored approach to global brand management.

Increased Market Access:

Having a registered international trademark can facilitate market entry and expansion into new countries, as it provides legal protection against unauthorized use of the brand in those markets.

Deterrence and Enforcement

An international trademark registration can act as a deterrent, discouraging potential infringers from using a similar mark. It also provides a legal basis for enforcement actions against unauthorized use in multiple jurisdictions.

FAQ

Who can file an international trademark?

Any Individual or business entity having a real and effective industrial or commercial establishment.

What documents are required to register an International Trademark?

A business's or a registered user's proof, The applicant's PAN card and Aadhar card, Logo details, Registration as an MSME, Trademark application number or trademark registration certificate (India).

Validity of the trademark registration?

An international trademark also has a validity of 10 years like a national trademark, after which it needs to be renewed within the expiry date, otherwise it will be removed from the registry and meanwhile one may lose the authority over the mark or name.

Does international trademark registration ensure protection in all designated countries?

No, as each country assesses the application based on its own laws, and there is no guarantee of registration. But, An application can target any country that's part of the Madrid System, which includes over 120 countries.

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International Trademark Registration