IP Rights Trademark Registration

International Trademark Registration: A Route to Global Branding

Trademark or service marks are a type of Intellectual Property which distinguishes your goods and services from other business. By registering your trademark, you protect your brand legally.  Trademark registration is generally territorial. A trademark registration done in a specific country applies to only that country. If you are planning to expand your business globally, you will be filing separate trademark applications for each country separately. Either get your trademark registered as per the prescribed law of that country or register your brand by the route of the Madrid Protocol. The Madrid Protocol prescribes methods for filing one international application for about 115 countries around the world. The application can be filed in English, French, and Spanish. This article describes the International Trademark registration procedure.

What is International Trademark Registration?

The International Trademark system allows you to protect your trademark in several countries by applying directly with the member country or through Madrid protocol. The trademark registration office of the concerned country must allow the protection of the mark. The International Registration allows the trademark owners to register their service marks in multiple countries (contracting parties) with a single and uniform application through a centralized filing system administered by the WIPO International Bureau. WIPO checks all the formal requirements like the accuracy of goods and services specification, relevant fees payments and then directs the International Trademark Registration to the chosen countries.

Benefits of Getting International Trademark Registration

• By registering a trademark abroad renders the company an exclusive right to commercialize its products in those markets.
• This provides a solid foundation to stop counterfeiters. It also ensures that the company enjoys proprietary rights over what may be one of its most valuable business assets.
• Registering a trademark abroad also provides an opportunity to license the brand to others by way of franchising or merchandising.
• The benefits of international trademark registration and protection of one’s trademark outweigh the cost of such registration.

The Madrid Protocol

World Intellectual Property Organization (WIPO), a specialized agency of the United Nations having its headquarters in Geneva, Switzerland, administers the Madrid Protocol. An Indian Company, trust, society, firm, sole proprietor or any other entrepreneur can take advantage of the Madrid protocol. The Madrid Protocol prescribes procedures to obtain and maintain the protection of the brand around the world. It provides a user-friendly, expeditious and cost-effective set of methods for the central filing of trademark applications and the central management of trademark registrations with effects in various countries. After receiving the International trademark registration for protection of the mark in the designated country, you will be able to manage your rights very easily by following online procedures at a single point (WIPO) to renew your trademark rights every ten years.

The Madrid Union consists of Contracting Parties to the Madrid Agreement and the Madrid Protocol. The Madrid Union currently has 106 members, covering around 122 countries. It includes both states and Intergovernmental organizations that are contracting parties to the Madrid Protocol. The office of the Contracting Party where you apply to register your essential mark is referred to as the ‘Office of Origin.’ In International Trademark Registration, a person or entity can select contracting parties where you need to protect your mark.

International Trademark Registration Process under the Madrid Protocol

The primary stages of International Trademark Registration under the Madrid Protocol are explained below:

Application for International Registration of Mark

• The trademark applicant should file international Trademark Registration under the Madrid Protocol through the trademark office of the applicant.
• The Trademark office of the applicant is also known as the office of origin.
• In the case of Indian businesses, applying for International trademark registration, the office of registrar of trademark, India is the office of origin. The office of origin or registrar of trademark, India will process the trademark application and file it with the Office of Intellectual Property Organization at Geneva.

Publication in the official Gazette of WIPO

• In case the trademark application is found fit, then the logo or brand is recorded in the International Register.
• The trademark is then published in the World Intellectual Property Organization (WIPO)^[1] Gazette of International Marks.
• After publication, the International Bureau then provides a certificate of international trademark registration. It notifies each of the country contracting to the Madrid Protocol for which protection has been requested by the trademark applicant.

Scope of Protection of International Trademark Registration

• All the designated countries’ trademark offices have got the right to refuse protection of the mark by notifying to the International Bureau within the specified time limits in the Madrid Protocol.
• The time limit to raise objections by the designated office is 12 or 18 months.
• In the case of no refusals, the mark is protected the same way as if it had been registered by the office of that country.
• The International trademark gets registered for ten years to be renewed at the end of 10 year period through WIPO or concerned office of origin.

What are the Requirements for Obtaining an International Trademark Registration in India?

The main requirements of an applicant for obtaining International Trademark registration in India is mentioned below:

• The applicant must be a national of India or domiciled in India or should have a real and active business or commercial establishment in India.
• The applicant must have completed a national trademark application or registration of a trademark with the Indian Trade Marks Registry. The national trademark application or registration will be used as the basis of the international application for registration.
• The international application will have the same brand as mentioned in the national trademark application or registration.
• The list of goods and services mentioned in the international registration application must be identical to the national mark.

E-Filing of International Trademark Registration Application

To file an international application electronically, some simple steps must be followed:

• Visit the IP India website by filling in a special form MM2(E) available at the International Application Originating from India link at a comprehensive e-filing services gateway at the following link: https://ipindiaonline.gov.in/trademarkefiling/user/frmLoginNew.aspx.
• Online payment of Rs. 5000/ must be made for filing International Application.

Contents Required in Application for International Trademark registration

The international application form (MM2) must contain the following mandatory requirements:

The international application also contain Contains some free content:

What are the Estimated Costs and Fees to get International Trademark registration?

International Application for getting registration is accompanied by the payment to WIPO of a set of fees (in Swiss francs) which includes: 

• A fee of 653 Swiss francs, if no reproduction of the mark is in colour or 903 Swiss francs if any copy of the mark is in colour.
• A complimentary fee of 100 Swiss francs for each designated Contracting Party not having any fixed individual fees.
• A supplementary fee of 100 Swiss francs for each class of goods and services.
• An individual fee for all the designated Contracting Party having fixed individual fees. Check: http://www.wipo.int/madrid/en/fees/ind_taxes.html to know the set rates of the selected countries.
• To facilitate calculation of the fees to be paid for an international application, WIPO offers an efficient online tool known as Fee Calculator that can be accessed at the following address: http://www.wipo.int/madrid/en/fees/calculator.jsp.
• Regarding payment methods, of the fees to WIPO either by: (i) credit card; (ii) WIPO current account; or (iii) bank transfer (https://www.wipo.int/finance/en/madrid.html).

Contact Enterslice

We at Enterslice offer worldwide trademark registration services. Whether you need to get your trademark registered in a single country or obtain global protection, our consultants can help you in the process. You don’t need to contact attorneys directly in every single country. Our experts will help you get through the process of getting the Trademark Registration quickly.

Wrapping Up

The Mobile manufacturer in India, Micromax received the international trademark registration giving it protection in over 110 countries. The international trademark registration for Micromax was processed under the Madrid Protocol. The Madrid Convention provides cost-effective, efficient and user-friendly procedures for the trademark holders. It protects the brands in multiple countries by the filing of a single application in a single office with one set of fees and one currency. The Madrid protocol ensures the legal protection of brand against competitors in export markets. In general, it provides the most effective support to the branding strategies. Hence, an international trademark registration administers inexpensive protection quite easily around the world.