International Trademark Registration: Procedural Aspects

14th January, 2022 - 4:03 am Categories: Intellectual Property 0 Comments

Introduction

Trademark rights, like other intellectual property rights, are considered different in each country or jurisdiction (hence “jurisdiction”) where they are obtained. Each jurisdiction has the right to recognize and protect trademark rights in a way that is consistent with its policy objectives. Although the term “international trademark rights” refers to a set of trademark rights that span a number of jurisdictions, each jurisdiction’s existence and enforceability are distinct and, in most cases, unrelated.

Despite variances in how trademark rights are recognized and enforced, many governments have agreed on basic methods or protocols for submitting trademark applications. These alternatives will be explained further below.

In which countries should an applicant register its mark?

You should consider registering your mark in any countries or jurisdictions where you sell your products or services under that mark, as well as in any jurisdictions where you plan to use the mark in the future and/or where you maintain an office or manufacturing site. Some trademark owners also register their marks in areas where intellectual property counterfeiting is a concern. In most jurisdictions, the use of a mark is not required before filing an application; however, certain jurisdictions do have usage requirements. For more information, it is best to get advice from a local attorney.

International Trademark Registration Process in India

Trademark registrations in India are only valid and applicable within the country, and any firm or individual seeking protection under a trademark must apply for registration under the laws of that country. Obtaining an international Trademark registration is not easy; however, recent modifications to India’s international Trademark process have made it easier for applicants to obtain a Trademark in other nations.  The procedure of registering an international trademark in India, as well as the requirements for filing an international trademark application is provided below.

Ways to Obtain an International Trademark Registration

There are two ways to register a trademark in a foreign country from India. The following are the steps in registering a trademark internationally:

A. International Application in Each Foreign Country

To get an international trademark in a foreign country, an international application must be filed directly with the foreign country’s Trademark office, following the country’s laws and regulations. This means that if an applicant wants Trademark protection in more than one foreign country, they must file a separate Trademark registration application in each country, as each country’s IPR rules are unique.

Procedure:

Step 1: Apply to the appropriate National Trademark Office

The initial stage of the process is to apply to the appropriate National Trademark Office. You must complete Form MM2 in order to apply to this 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. This can take up to two months in most cases.

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 requirements. It will be published in the WIPO’s International Trademark Gazette once it has been approved, and 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 of each requested country

The international trademark registration method works in the same way as if you applied to register a national trademark in each of the countries you’ve specified. As a result, at this step, the relevant national trademark authorities 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 or bulletin 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 protected in that country.

B. International Application under the Madrid System

The Madrid System is the second way for an international trademark registration system. It allows you to obtain trademark protection in a large number of jurisdictions at the same time. The Madrid Agreement and the Madrid Protocol are two different international treaties that govern the system (Protocol). Under the Agreement, nationals of any signatory can protect their trademarks, which are registered in their home country, in all other signatory countries. Nationals of any signatory may get protection in countries and jurisdictions that are contracting parties to the Protocol based on a pending application or registration in the country or jurisdiction of origin, according to the Protocol.

The World Intellectual Property Organization’s International Bureau is in charge of both the Agreement and the Protocol (WIPO). Only the Protocol’s provisions apply to countries bound by both the Agreement and the Protocol as of September 1, 2008. As a result, International Registrations are controlled only by the Protocol (1) in all jurisdictions that are only parties to the Protocol, and (2) in jurisdictions that are both parties to the Protocol and the Agreement, as of that date. Only those jurisdictions that are solely bound by the Agreement are governed by it.

Procedure:

The Madrid Protocol, which went into effect in 1996, and the Madrid Agreement, which dated from 1891, govern the international trademark registration system. A mark can be registered in numerous countries under the Madrid Protocol by filing an application for international trademark registration with the trademark office of the applicant’s home country. Because of globalization and international ease of access, India adopted the Madrid Protocol in 2013.

The Trademark registration application can be filed with the Office of the Registrar of Trademarks in India, together with the required documentation, under the Madrid Protocol. The Registrar will process the application and, after verification, will process the Trademark application and file it with the International Organization for the Protection of Intellectual Property in Geneva.

The World Intellectual Property Organization (WIPO) examines the trademark application, and if it is deemed to be appropriate, the mark is registered in the International Register and published in the WIPO Gazette of International Marks.

The International Bureau then issues a certificate of international trademark registration and notifies each of the Madrid Protocol countries about the applicant’s trademark. However, 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 registration must be submitted to the International Bureau in a prescribed way. 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.

An international trademark is registered for 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 at the conclusion of the ten-year period.

Requirements for Obtaining International Trademark Registration

In order to secure an international trademark registration in India, you must meet three key requirements:

1. The applicant must be an Indian national, a resident of India, or have a legitimate business or commercial establishment in India.
2. For the mark, the applicant must have a national trademark application or registration with the Indian Trade Marks Registry.
3. The applicant must select one or more other Madrid Protocol member countries in which they wish to register their trademark.

Advantages of Madrid Protocol Trademark Registration

The following are some of the advantages of filing a trademark application under the Madrid Protocol:

1. There is only one International application that must be submitted.
2. Regardless of the contracting party’s language, the application can be filed in any of the three languages: English, French, or Spanish.
3. Government filing fees for each foreign country must be paid in India in a single currency, the Swiss Franc (CHF).
4. Under the Madrid Convention, all applications are assigned a single registration number that is valid in all territories.

Countries such as Nepal, Pakistan, Bangladesh, Sri Lanka, Myanmar, Malaysia, Hong Kong, Indonesia, Iraq, Kuwait, Mauritius, Saudi Arabia, Taiwan, Thailand, Canada, and others are not part of the Madrid Protocol, so if an Indian citizen wants to register a trademark in these countries, he or she must file separate applications in each country.

Can International Registrations be transformed into national applications?

International Registrations are subject to a five-year dependency term, during which they are reliant on a national basic application or registration. The protection provided by the International Registration may no longer be invoked if the national application or registration lapses within five years of the date of the International Registration, or as a result of an action taken before the expiration of the five-year term. Despite the dependency, the holder has the right to convert its International Registration into relevant national applications within three months of the date on which the International Registration was canceled, so taking advantage of the IR data and, if applicable, the priority date.

Conclusion

In today’s world, the most difficult component of trademark protection is international trademark protection. Due to the impossibility of registering a trademark in every country, a trademark owner must register his or her trademark rights in each country where protection is sought. The registration of trademarks is restricted to specific geographical areas. Any national trademark registration expires when the country’s borders are reached. It forbids its owner from exercising Trademark Registration rights outside of the country. That is to say, you must file a separate trademark application for each nation where you want to establish a brand presence. For trademark registration, you must follow the procedures established by the other country. Your trademark will gain international recognition and worldwide protection if you register it.

Author: Anuja Saraswat – a student of  B.A.LL.B (Hons.) from NMIMS Kirit P. Mehta School of Law (Mumbai), in case of any queries please contact/write back to us via email vidushi@khuranaandkhurana.com or contact us at Khurana & Khurana, Advocates and IP Attorney.