International Trademark Registration: Its procedures and Aspects

 

Trademark rights and other Intellectual property Rights are different in different countries. Each jurisdiction or country has their own way to protect their Trademarks in a way that is consistent with its policy objectives. However the term International Trademarks Rights stands out differently in different jurisdictions of countries. In each jurisdiction its existence and enforceability are different in most cases, unrelated.

Despite different acts and rules in different countries, the Government has adopted and agreed  basic methods or protocols for submitting Trademark applications. These Alternatives are explained in the blog further.

In which Countries Should an Applicant Register Its Mark?

The applicant should register its mark in any country where they want to sell their goods or products or services and in jurisdictions where they want to do future business. Some trademark owners also register their marks in the areas where intellectual property counterfeiting is concerned. Before registering your mark in a particular country it is always advisable to consult your attorney.

International Trademark Registration Process in India

The Trademarks registered in India are only valid and applicable in India. Any firm or businesses want to seek trademark protection in another country then they must apply for trademark registration in that particular country. Obtaining Trademarks in other countries is not easy but after certain modifications and conventions obtaining Trademark is foreign countries have also become easier for applicants. 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 basically two ways to register a Trademark in foreign nations. Following are the steps in registering a Trademark internationally.

1. International Application in each Foreign Country

To get Trademark protection in foreign country, the applicant bends to file an application for Trademark protection directly with the foreign country’s Trademark office. Which means that if an applicant wants Trademark protection in more than one country, then he must file a separate application in each country.

Procedure

Step 1- Apply to Appropriate National Trademark Office

The first step is to apply to the appropriate Trademark office. You must complete form MM2 in order to apply to this national office. The application will be examined by the appropriate trademark office once it is filed. If the application is free of errors then it will be transferred to WIPO for worldwide review. This process may take upto two to three months.

Step 2- Examination of Trademark Application by WIPO

 After submitting the application with the national office, the WIPO will then examine that trademark application. This assessment is done to confirm that the application is free from errors and that you are a genuine applicant who meets all the requirements. One WIPO approves the application it will be published in the WIPO’s International Trademark Gazette and the applications 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

After submitting the application to the respective national trademark offices to which the applicant has requested to protect it, the trademark will then examine the application. The trademark office will check the existence of any similar trademarks. Once the application is approved the trademark office will then publish the application in their national gazette. 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.

2. International Application under the Madrid system

The Madrid system is the second way for filing an international trademark application. It enables you to get large protections in several countries by filing a single application. By filing an Application under the Madrid system, the applicant gets protection in the countries that are signatories to the Madrid protocol. 

Requirement for Obtaining International Trademark Registration

In order to secure your Trademark internationally, you must meet three key requirements-

• An applicant must be an Indian national or must have an established business in India.

• For international trademark application, the applicant must have registered Trademark in its domicile country first.

• The applicant must select one or more 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.

Conclusion

In today’s world international trademark protection is the most difficult component. Due to complexity in registering their trademark in different countries, the applicant must seek trademark protection in their native country first. The registration of trademarks is restricted to specific geographical areas. 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.