International Trademark Registration

Trademark is a defensive and expansive strategy for businesses around the globe. With the advancement in the globalization and online presence of the marketplace, it is not possible to keep a record of information being made public on social media and the 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 of international expansion. International trademark registration is necessary from the view of an entrepreneur as not doing so would weaken the impact of your trademark causing business economic losses and loss to the goodwill as well. Another benefit of an international trademark is that it would facilitate licensing trademark right to other entities, which would help in franchise operations.

Need for International Trademark

Trademark rights are territorial and are granted separately in each country. It can protect your business in your country very well but not overseas. To overcome this problem and ensure your trademark is protected not just in your country but overseas as well, International Trademark is the solution. There is this example of a US-based Pinterest that 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 the trademark timely.

Who Issues International Trademark Certification?

The World Intellectual Property Organisation, popularly known as WIPO provides International Trademarks to the applicants. It has an agreement signed by many countries and these member countries who have joined the Madrid Protocol can get trademark registration for any member country from a single application. WIPO is a self-funded agency of the United Nations and a global forum for IP services.

Madrid Protocol came into operation in 1996 and the system of international trademark registration certificate is governed by this protocol. There are 130 countries in the Madrid protocol including the USA, the UK, France, India etc. Madrid protocol is an international system for the registration of trademarks. According to this protocol, a mark is securely protected in those countries and jurisdictions which are contracting parties to the protocol. The Madrid Protocol has benefits as well as drawbacks which are mentioned below-

Advantages of the Madrid Protocol

• It is a centralised cost-effective system to provide international trademarks to individuals, companies and organisations of multiple member countries.
• The process of registration, as well as the process to change the registration details, is straightforward.
• Applicants can extend the purview of their international trademark registration by adding more countries to the existing registration.

Drawbacks of the Madrid Protocol

• The process prescribed by the Madrid Protocol takes 12 to 18 months to provide international trademark certification.
• The Madrid Protocol only extend to the countries that are part of the protocol.

Before you move to register your international trademark, it is imperative to check the prerequisites of international trademark certification. You need to keep the following things in mind when applying for International Trademark Registration-

• Ensure that the trademark is not yet registered in the countries you are seeking registration.
• Make an international trademark search on WIPO’s broad database to check all registered trademarks.
• The search can be performed using the text, image or the class of goods and services.
• You must get the trademark in your country before applying for international trademark registration.
• Your country must be a part of the Madrid System.
• You can choose multiple countries when applying for international trademark registration, so decide beforehand which countries you are going to apply for.

You need the following documents to register your international trademark-

• Identity Proof
• Address Proof
• Business Registration (CIN, Partnership, MSME etc.)
• International Application Form MM2
• Copy of Trademark - Text, Image etc.
• Trademark Registration Certificate in Domestic Country

The process to obtain International Trademark Registration involves the following steps-

• Step 1:- Application Filing

The applicant needs to file an application in his home country to get national trademark registration. He can do this easily with the help of Corpseed.

• Step 2:- Role of Trademark Registrar

The trademark registrar of the home country examines the application for international trademark certification and forwards it to the World Intellectual Property Organisation.

• Step 3:- Processing of International Trademark Application by WIPO

The World Intellectual Property Organisation examines your application and mark. If it qualifies to be registered as an international trademark, WIPO registers it into the international register of trademark and publishes the same in the WIPO Gazette.

• Step 4:- Issue of Certificate by WIPO

WIPO also issues a certificate of registration and acknowledgement of compliance with the WIPO requirement after successful registration.

• Step 5:- Notice to Designated Members

WIPO issues notice to the Designated Countries about International Trademark Registration. Designated countries are those where you have sought trademark registration under your international trademark application.

• Step 6:- Role of Designated Countries

At this stage, designated countries review the mark and decide whether it can be provided with protection or not. Such a decision must be taken within 12 to 18 months. It can either grant the protection or refuse the protection.

If the designated countries grant protection to your trademark, you own it in that country. If some of those designated countries refused to grant the protection to your trademark then you only own it only in the countries where the protection is granted. Corpseed assists you throughout the process and coordinates with various national and international stakeholders to get your international trademark registered.

The cost of International Trademark Registration is around sixty thousand rupees paid in Swiss Francs using online methods. If the mark is in colour then the fee for international trademark registration starts from eighty-five thousand rupees. After the expiration of the trademark every ten years, you also need to renew it and the renewal fee will also be around sixty to eighty thousand rupees. The fee may fluctuate based on the countries you are covering under the trademark and the classes you are seeking registration.

Our expert team in matters of national and international trademarks provides you much needed guidance according to your needs. The team has years of experience in the same domain. It is well versed with the national and international provisions concerning international trademark registration. Along with this knowledge, the team at Corpseed is well aware of the possible challenges that applicants face while filing an international trademark application. It makes us the best choice for you to go with and take assistance to get your international trademark registered. Corpseed is the one-stop solution for all your business needs.