International Trademark Registration Filing In India:- Overview

In our daily lives, we come across trade names of various products and services which have created unique identity and popularity among consumers due to their quality and efficiency. However, for ensuring such uniqueness of the mark is not made use of by any other entity or person illegally, there are legal statutes under the Indian legal system to offer protection against such illegal use as well as providing for punishment for the same through trademark registration. Thus, the Indian Trademarks Act 1999, is one of such legislations that provides protection against illegal use or application of the prior registered and well-established trade ‘mark’ within the national boundaries.

However, considering the fact that, in the age of globalization every business organization offering either products or services or both intends to extend its business globally, there are higher possibilities that such products or services will be prone to such illegal or dishonest use of such well-established marks. Therefore, the Government of India has signed the International Madrid convention for the facilitation of international registration of trademarks for providing legal protection to the applicant trademark on a global level.

Therefore, the following must be kept in mind while making an application -

• The applicant shall be required to file only one application with respect to an international trademark application under the Madrid Convention out of any one of the languages such as English/French or Spanish irrespective of the language of the applicant concerned.
• Such an application could be filed for a trademark which has been either registered already or is in the process of registration in India.
• The application can be filed in any one language out of English, French or Spanish irrespective of the language of contracting party. 
• Each applicant shall be required to make payment of the application fee in Swiss franc currency and the same shall be required to be paid in India.
• Once the registration is completed, the proprietor of such registered mark shall be allotted only one registration number which shall be valid in all member countries under Madrid Convention.
• Such international registration shall be allowed to be further extended geographically across other nations through a single procedure.

International Application under Madrid Protocol

The Madrid Protocol, which came into force in 1996, and the Madrid Agreement, which came into force in 1891, are both international laws. The main point of this new agreement was to unify and simplify the international registration of marks. In order to protect the rights of trademark owners, an international registration under the Madrid Protocol ensures that trademark protection is extended to all member countries of the Madrid Union for the Protection of Industrial Property.

Read Our Blog: The Madrid Protocol - International Trademark Registration

Benefits of International Trademark Registration

• Global Recognition-Obtaining global registration for your trademark enables the applicant to expand his business operations confidently without any unnecessary worries of trademark infringement.
• Business Expansion & Profitability-Registering a trademark internationally provides an exclusive right to the trademark proprietor to commercialize its products or services in foreign markets. Further, such proprietor can offer to license of his trademark to other entities which imply better prospects and higher profitability for the business which includes examples like Starbucks, Nike, Dominos, etc., and many others.
• Protection against Infringement- When the proprietor has obtained international registration for his trademark, it is much easier to take legal recourse against deliberate infringement of the registered trademark with higher chances of success.
• Benefits for E-commerce businesses- In the modern age, where online e-commerce businesses are gaining more attention and popularity more than ever, it becomes necessary to ensure that the trademark is registered before taking the same on an international level to avoid any potential infringement of the same.
•  Longer validity and easier renewability- Once registered, the international trademark registration is valid for a long period of ten years and comes with an easier process of renewal.

Process of Registration-

Following is the step-by-step process of trademark registration-

Undertaking Trademark Search- 

Before you start the process of the international trademark registration, it is necessary to ensure that the trademark is not already registered or the proposed trademark is not too closely similar to such already registered trademark, in the relevant market which can be checked on the WIPO’s Global Database.

Filling application for Registration with the local office-

Once you find that the proposed mark is unique and not previously registered, the applicant can move to the next step and make an application to the local trademark office in the home country to be observed carefully and accepted by the concerned Registrar of Trademark Office.  If the Registrar satisfies himself that the trademark is complete in all respects and qualifies for international trademark registration, he/she will forward the application to WIPO authority for consideration.

Examination of application by WIPO- 

In the next step, the WIPO organizational authority goes through the application and on being satisfied that the trademark application is eligible for registration, the WIPO authority will enter the trademark details in the register of international marks and will get the same advertised in the WIPO Gazette. Further, the applicant shall be intimated of the acceptance of the mark by means of authentication and the same shall be notified to all the Intellectual property offices in all the national offices of the requested countries.

Examination is undertaken by concerned National Offices-

The Intellectual Property Rights offices will assess the validity of such trademark as well as the fact that if there are any potential conflicts with any existing marks in each of such requested countries by advertising the same in the national gazette of the same country. If they find any potential conflicts within such mark with any existing mark, they will communicate the same within the minimum time period of 12 months which may extend up to 18 months or more. But, if no such provisional conflict is found with the application, the proprietor shall be intimated of the acceptance of the registration of the international trademarks and you are good to go!

On a global scale Countries that protect trademark registrations

• African
• Albania
• Algeria
• Antigua and Barbuda
• Armenia
• Australia
• Austria
• Azerbaijan
• Bahrain
• Belarus
• Belgium
• Bhutan
• Bosnia and Herzegovina
• Botswana
• Bulgaria
• Cambodia
• China
• Colombia
• Croatia
• Cuba
• Cyprus
• Czech Republic
• Democratic People’s Republic of Korea
• Denmark
• Egypt
• Estonia
• European Union
• Finland
• France
• Georgia
• Germany
• Ghana
• Greece
• Hungary
• Iceland
• India
• Iran
• Ireland
• Israel
• Italy
• Japan
• Kazakhstan
• Kenya
• Kyrgyzstan
• Latvia
• Lesotho
• Liberia
• Liechtenstein
• Lithuania
• Luxembourg
• Mexico
• Monaco
• Mongolia
• Montenegro
• Morocco
• Mozambique
• Namibia
• Netherlands
• New Zealand
• Norway
• Oman
• Philippines
• Poland
• Portugal
• Republic of Korea
• Republic of Moldova
• Romania
• Russian Federation
• Rwanda
• San Marino
• Sao Tome and Principe
• Serbia
• Sierra Leone
• Singapore
• Slovakia
• Slovenia
• Spain
• Sudan
• Swaziland
• Sweden
• Switzerland
• Syrian Arab Republic
• Tajikistan
• The former Yugoslav Republic of Macedonia
• Tunisia
• Turkey
• Turkmenistan
• Ukraine
• United Kingdom
• United States of America
• Uzbekistan
• VietNam
• Zambia
• Zimbabwe