Trademark Registration

International Trademark Registration in India: Frequently Asked Questions (FAQ)

This article describes the view over the frequently asked questions over the international trademark registration in India. The Registration of Trademark is governed by Madrid Protocol. The legislation intends to make the brand safe and secured both nationally or internationally.

Like all other intellectual property rights, trademark rights are considered different in each country or jurisdiction for where they are obtained. International Trademark Rights refers to a set of trademark rights across the number of countries, jurisdictions, existence, enforceability, as these rights are unique to each country.

International Trademark Registration

An international trademark registration which is a designation for the Registration secured under the Madrid System or Madrid Protocol.

It is a uniform application through a centralized filing system. It is a process, which allows the trademark owner, to register within the various countries, through a single form.

Benefits

1. Centralized application system.
2. Stops the individual to file various individual national applications.
3. Uniform application.

Conventions – Governing International Trademark

The Paris Convention regulates the protection of Industrial Property. This convention is the international treaty for the protection of intellectual property. Over about 177 countries are signatories to this convention.

The convention is primarily focused on a national of any country of the Union are provided the same advantages concerning intellectual property protection and enforcement that the national law of any country of the Union grants its citizens.

Madrid Protocol- International Trademark Registration

It is the system for the International Registration of Trademark. The Agreement was signed on September 1, 2008, from this date; the international trademark registrations were governed exclusively by the Protocol, to all the countries and jurisdiction to the party to the Protocol, and those that are party to the Protocol and Agreement.

The features of the Madrid Protocol as follows:

1. It gives the protection to a trademark and jurisdictional protection in various jurisdictions/countries.
2. The system is controlled by two treaties namely: Madrid Agreement and Madrid Protocol^[1].
3. As per the Agreement, the national of any signatory can secure the protection of their Trademark registered in the country of their origin, and in all other states that are parties to the Agreement.
4. Before this Agreement and Protocol, the rules of the World Intellectual Property Organisation (WIPO) were followed.

Some Frequently Asked Questions over International Trademark registration in India:

Q1. What is a trademark?

The definition of a trademark is well recognized from the standards of an International Trademark.

A trademark is intellectual property with a recognizable sign, design, expression, which identifies the product or the services, of a particular source from the other source.

It can be described as a form of visual or symbol, word, signature, name, device, label, numerals, combination, of colours, used on one undertaking of goods or services, or other articles of commerce used to distinguish it from other similar goods or services, originating from the different undertaking.

Q2. What is Registration according to international Trademark registration?

1. The graphical representation of a mark must be selected.
2. Must be capable of distinguishing goods or services from one or other.
3. It is a mark which is to be used or proposed to be used, to indicate, a connection in the course of trade, between the goods or services, and some have the right to use the mark with or without the identity of that person.

Q3.What are the functions of a Trademark according to the standard of International Trademark?

• Identification from the origin of Goods or Services
• No change in quality
• Advertisement for goods or services
• Creates the public image for the goods or services.

Q4.  What types of Trademarks are to be registered in India?

• Unusual Names

Name which is not unusual for a trade to adopt as a mark, (includes, personal, surname of the applicant or predecessor in business, or the signature of the person)

• Invented word

Those words which are not found in the dictionary or non-arbitrary names. They are non-descriptive of the quality of the character or quality of goods or services.

• Letters

Those letters or numerals or a combination thereof.

• Right to Proprietorship

It gives the right to proprietorship over a trademark acquired either by Registration, under the Act, or by use concerning the goods or services.

• Scheme of colours

This means that even the combination of colours, or even a single colour, with a word or device.

• Shape of Goods

This means that every shape of goods or their packaging.

• 3-Dimensional Design

This means marks having 3-Dimensional designs

• Sound Marks

Those sounds which are represented in conventional notation or described in words by being graphically represented.

Q5. How is the International Trademark Registration done in India?

To file the international Trademark, the procedure is as follows:

• Application of Trademark in India

There has to be a corresponding application to be filed in India for a Trademark.

• Designated by several countries in Madrid Protocol

In a single application under the Madrid Protocol, several countries will be designated which are members of this system

• Fees depend on number of classes

The fees will depend on the number of classes and countries designated.

• Fees using Online Tool

The fees over the application of trademark can be calculated using the online tool in India, by choosing the office of origin in India, selecting the number of classes, and specifying the colour of the mark

• Fees to Indian Trademark Registry

The fees of Rupees 2000 is payable in the Indian Trade Mark Registry

• Examination by designated members

Upon filing the application, the mark is examined by each designated member country, where Registration is sought and then precedes the Registration.

• 5 years from the date of Registration

An international trademark registration under Madrid Protocol is however dependent on the corresponding Indian application for five years from the date of the international application.

• Separate Registration in a different country who is not registered

 If there is requirement or wish to obtain the Registration in a country which is not a member of the Madrid Protocol, separate national trademark registration has to be filed directly in that country.

Q6. Forms under which Registration is processed for International Trademark Registration?

The Form which is to be used is MM2 – an international application form.

Conclusion

It can be concluded that registering a Trademark internationally, renders the company an exclusive right to commercialize its products in those markets globally. This is a foundation for stopping the counterfeiting of the brand and its consequences. The owner gets the exclusive right as one of the business assets.

This increases the company’s opportunity to license the Trademark for the company’s franchising or merchandising strategy.

The benefits and protection which a registered trademark outweighs the cost of international trademark registration.

Read our article:International Trademark Registration: A Route to Global Branding