International Trademark

Overview:

International trademark registration is the process of legally protecting a brand name, logo, or slogan in multiple countries.

Under the Madrid Protocol, applicants can file for international trademark registration through their country’s trademark office, known as the “office of origin.” For instance, if a business operates in India, the Office of the Registrar of Trademarks in India serves as the office of origin. The office of origin manages the trademark application process and submits it to the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva.

Once submitted, the trademark application undergoes examination to ensure compliance with international standards. If approved, the mark, logo, or word is recorded in the International Register and published in the WIPO Gazette of International Marks. The International Bureau issues a certificate of international registration and notifies countries that are signatories to the Madrid Protocol of the trademark’s registration.

It’s important to note that the Madrid Protocol imposes a strict time limit of 12 and a half years for any issues raised by designated offices regarding the international trademark registration. This streamlined process simplifies the procedure for obtaining trademark protection across multiple jurisdictions, offering efficiency and convenience to applicants seeking international trademark registration.

At Corporate Raasta Consulting, we offer end-to-end support for international trademark registration, helping businesses to protect their intellectual property and prevent others from using it without permission.

Benefits:

Some of the key benefits of international trademark registration include:

International Trademark Registration Application: This serves as the formal request for international trademark registration. The application must contain all relevant details about the trademark, including the mark itself, the classes of goods or services it will cover, and the applicant’s information.

Application Form: The application form provides a standardized format for submitting information about the trademark and the applicant. It typically includes sections for details such as the mark’s representation, description, and classification of goods or services.

Power of Attorney: A power of attorney grants authority to an individual or entity to act on behalf of the applicant in matters related to the trademark registration process. It authorizes a representative, such as a trademark attorney or agent, to file the application and handle correspondence with the trademark office.

Handling Fee Payment: The payment of a handling fee is required to cover administrative costs associated with processing the international trademark application. This fee may vary depending on the jurisdiction and the services provided by the trademark office.

International Designation Fee Payment to WIPO: In addition to the handling fee, applicants must pay the international designation fee to the World Intellectual Property Organization (WIPO). This fee is mandatory for submitting an international trademark application under the Madrid Protocol and contributes to the administration of the international registration system.

Following are the steps that need to be followed during the process of international trademark registration under the Madrid Protocol to ensure protection across multiple jurisdictions:

Applying Through National Trademark Office: Start by verifying your registration with the national Trademark and IP office of your country. If you’re not already registered, submit an application for basic trademark registration. Once your basic trademark application is processed and approved, you can proceed to apply for international trademark registration through the same national office. Submit your application for international trademark registration, which will then be forwarded to the World Intellectual Property Organization (WIPO).

WIPO Examination: WIPO conducts a thorough examination of your international trademark application to ensure compliance with international trademark standards. If your application meets the necessary requirements, your international trademark is published in the WIPO Gazette of International Marks and added to the International Register. WIPO notifies the IP Offices in each jurisdiction where you’ve applied for trademark protection and issues you a certificate of international registration.

Examination By National Office: After a specified period (usually 12 or 18 months) following the enactment of your international registration, the IP Offices of the relevant jurisdictions review your application. Each IP Office evaluates whether to fully or partially protect your mark within its jurisdiction based on its own laws and regulations. The decisions of one IP Office do not impact the decisions of other Offices. If an Office refuses protection, you can contest the decision directly with that Office. If an IP Office accepts responsibility for protecting your mark, it issues a statement of protection.

Maintenance and Renewal: Your international trademark registration is valid for 10 years from the filing date. You have the option to renew it for additional 10-year periods thereafter. Ensure timely renewal to maintain protection of your trademark in all designated jurisdictions.

To seek trademark protection directly in a specific country, businesses or individuals must submit an international trademark application directly to the trademark office of that nation, adhering to its legal requirements and procedures.

Following are the steps:

Research and Preparation: Before submitting the application, conduct thorough research to understand the trademark registration process and requirements of the target country. Prepare all necessary documentation, including the trademark application form and supporting materials, such as a specimen of the mark and a list of goods or services associated with the mark.

Application Submission: Complete the international trademark application form according to the guidelines provided by the target country’s trademark office. Ensure that all required information is accurately provided, including details about the applicant, the mark itself, and the scope of protection sought.

Compliance with Legal Requirements: Verify that the application complies with the legal requirements and regulations of the target country. This may include requirements related to trademark eligibility, distinctiveness, and classification of goods or services.

Payment of Fees: Pay the requisite fees associated with the trademark application process. These fees may vary depending on factors such as the type of mark, the number of classes of goods or services, and any additional services requested.

Examination and Review: The trademark office conducts an examination of the application to assess its compliance with legal requirements and to determine the availability of the mark for registration. This may involve reviewing the mark for similarity to existing trademarks and assessing its distinctiveness.

Publication and Opposition Period: If the application meets the necessary criteria, it may be published in the trademark office’s official gazette for public review. During this period, interested parties may file oppositions to the registration of the mark based on grounds such as prior rights or likelihood of confusion.

Registration and Protection: If no oppositions are filed or if they are successfully overcome, the trademark office issues a certificate of registration, granting exclusive rights to the mark within the jurisdiction. The mark is then protected under the trademark laws of the country, providing the owner with legal recourse against infringement.

Checklist:

Here are some of the steps you should consider when registering an international trademark:

1. Determine the countries in which you want to register your trademark.
2. Conduct a trademark search to ensure that your chosen trademark is available.
3. File a trademark application in each country in which you want to register your trademark.
4. Monitor your trademark for potential infringement.

Documents

Logo Replica (Optional): While not mandatory, including a replica of the logo or trademark being registered can help reinforce the application and provide a visual representation of the mark. It should accurately depict the design or stylized elements of the trademark.

Form 48: Form 48, also known as the Authorization of Agent form, is a legal document authorizing a trademark agent or attorney to act on behalf of the applicant during the trademark registration process. It must be duly filled out and signed by the applicant.

Certificate of Registration for Udyog Aadhar: The Udyog Aadhar registration certificate is required for small and medium-sized enterprises (SMEs) seeking trademark registration in India. It serves as proof of registration under the Udyog Aadhar scheme, which provides various benefits to MSMEs.

Certificate of Incorporation or Partnership Deed: For business entities such as companies or partnerships, the certificate of incorporation (in the case of companies) or partnership deed (in the case of partnerships) is necessary. These documents validate the existence and legal status of the business entity applying for trademark registration.

Identity of Signatory Document: A document proving the identity of the signatory authorized to sign the trademark application on behalf of the applicant is required. This could be a copy of the signatory’s passport, Aadhar card, driver’s license, or any other government-issued identity card.

Address Proof of Signatory: Additionally, a proof of address for the signatory is required to confirm their residential or business address. This could include documents such as a utility bill, bank statement, or rental agreement, among others.

Process:

Following are the steps that need to be followed during the process of international trademark registration under the Madrid Protocol to ensure protection across multiple jurisdictions:

Applying Through National Trademark Office: Start by verifying your registration with the national Trademark and IP office of your country. If you’re not already registered, submit an application for basic trademark registration. Once your basic trademark application is processed and approved, you can proceed to apply for international trademark registration through the same national office. Submit your application for international trademark registration, which will then be forwarded to the World Intellectual Property Organization (WIPO).

WIPO Examination: WIPO conducts a thorough examination of your international trademark application to ensure compliance with international trademark standards. If your application meets the necessary requirements, your international trademark is published in the WIPO Gazette of International Marks and added to the International Register. WIPO notifies the IP Offices in each jurisdiction where you’ve applied for trademark protection and issues you a certificate of international registration.

Examination By National Office: After a specified period (usually 12 or 18 months) following the enactment of your international registration, the IP Offices of the relevant jurisdictions review your application. Each IP Office evaluates whether to fully or partially protect your mark within its jurisdiction based on its own laws and regulations. The decisions of one IP Office do not impact the decisions of other Offices. If an Office refuses protection, you can contest the decision directly with that Office. If an IP Office accepts responsibility for protecting your mark, it issues a statement of protection.

Maintenance and Renewal: Your international trademark registration is valid for 10 years from the filing date. You have the option to renew it for additional 10-year periods thereafter. Ensure timely renewal to maintain protection of your trademark in all designated jurisdictions.

To seek trademark protection directly in a specific country, businesses or individuals must submit an international trademark application directly to the trademark office of that nation, adhering to its legal requirements and procedures.

Following are the steps:

Research and Preparation: Before submitting the application, conduct thorough research to understand the trademark registration process and requirements of the target country. Prepare all necessary documentation, including the trademark application form and supporting materials, such as a specimen of the mark and a list of goods or services associated with the mark.

Application Submission: Complete the international trademark application form according to the guidelines provided by the target country’s trademark office. Ensure that all required information is accurately provided, including details about the applicant, the mark itself, and the scope of protection sought.

Compliance with Legal Requirements: Verify that the application complies with the legal requirements and regulations of the target country. This may include requirements related to trademark eligibility, distinctiveness, and classification of goods or services.

Payment of Fees: Pay the requisite fees associated with the trademark application process. These fees may vary depending on factors such as the type of mark, the number of classes of goods or services, and any additional services requested.

Examination and Review: The trademark office conducts an examination of the application to assess its compliance with legal requirements and to determine the availability of the mark for registration. This may involve reviewing the mark for similarity to existing trademarks and assessing its distinctiveness.

Publication and Opposition Period: If the application meets the necessary criteria, it may be published in the trademark office’s official gazette for public review. During this period, interested parties may file oppositions to the registration of the mark based on grounds such as prior rights or likelihood of confusion.

Registration and Protection: If no oppositions are filed or if they are successfully overcome, the trademark office issues a certificate of registration, granting exclusive rights to the mark within the jurisdiction. The mark is then protected under the trademark laws of the country, providing the owner with legal recourse against infringement.

The process under the Madrid Protocol for international trademark registration involves the following steps:

International Application Filing Through an Attorney: The process begins with the filing of an international trademark application through an attorney or trademark agent authorized by the applicant. Authorization must be provided on Form TM-48, and any applicable stamp duty must be paid as per state regulations.

Document Submission: If the designated foreign country is a member of the European Union, a second application in Form MM-18(E) may be required. Additionally, the applicant must specify a second language if the designated country is the US, other than French, German, Italian, or Spanish. The international application must be completed in the prescribed Form MM-2(E).

Verification: Upon receipt of the international application, the trademark registrar verifies that it meets the requirements stipulated by the Madrid Protocol before forwarding it to the World Intellectual Property Organization (WIPO). WIPO then transfers the application to the relevant foreign government for further processing.

National Registration: The validity of the international registration is contingent upon the continued effectiveness of the local registration in the designated countries for a period of five years. If the local registration expires or the trademark application is rejected, withdrawn, or treated as abandoned within five years, the international registration may no longer be protected.

WIPO Application: International applications received from offices of origin are meticulously examined by WIPO. Any discrepancies or abnormalities are typically communicated through the office of origin within three months of notification. Upon acceptance, the goods/services specified in the application are protected under the international registration.

International trademark registration offers the following benefits for businesses seeking to protect their brands and intellectual property on a global scale:

Legal Defense: International trademark registration provides legal protection against any infringement of the registered trademark by third parties. With a registered trademark, it becomes easier to establish legal rights in court and take legal action against infringement. Conducting a trademark search and ensuring registration before pursuing legal action is crucial for effective defense against infringement.

Business Opportunity: A registered trademark serves as an intangible asset that enhances the brand’s value and opens up various business opportunities. A successful trademark registration allows businesses to prosper financially and gain recognition in the market. Licensing agreements, such as those utilized by renowned brands like Nike and McDonald’s, enable businesses to earn royalties and expand their revenue streams.

Unique Identity: International trademark registration ensures that your product or brand gains recognition on a global scale. Registering a trademark is the first step towards establishing a unique identity for your brand and distinguishing it from competitors in the market.

Alterations and Renewal: Once registered, an international trademark remains valid for a period of 10 years from the registration date. However, the process for making alterations or renewing the registration is straightforward. Businesses can easily submit the same application form used for initial registration to WIPO for renewal purposes, ensuring continued protection of their brand identity.

Safeguards Your Brand in Export and Import: International trademark registration protects your brand from counterfeiting and unauthorized use in export and import activities. By registering your trademark internationally, you gain the legal right to take action against any violations related to import or export of goods bearing your trademark, safeguarding your brand’s reputation and integrity on a global scale.

Difference Between International Application in Each Foreign Country and Madrid Protocol:

The cost of international trademark registration under the Madrid System consists of following three main components:

Application Fee: The application fee serves as the basic cost for registering the trademark internationally. It covers the administrative expenses associated with processing the application.

Complementary Fees: Complementary fees are incurred for each contracting party, i.e., each country where the applicant seeks protection for their trademark. These fees vary depending on the number of countries included in the application. In some cases, complementary fees may constitute the only individual charges levied

Supplementary Fees: Supplementary fees may be imposed by the office of origin to cover additional handling and verification costs incurred during the application process. For example, in India, a supplementary handling fee of ₹2000 is charged by the office of origin to verify and forward the application to the World Intellectual Property Organization (WIPO).

How Corporate Raasta Consulting can help you with the process

Legal Expertise: Corporate Raasta Consulting employs legal experts who are well-versed in international trademark laws and regulations. We provide comprehensive guidance on the process of international trademark registration, ensuring that businesses understand their rights and obligations in different jurisdictions.

Trademark Search: Before initiating the international trademark registration process, conducting a thorough trademark search is essential to identify any potential conflicts or existing trademarks that may hinder registration. Corporate Raasta Consulting performs comprehensive trademark searches across multiple jurisdictions to assess the availability of trademarks and minimize the risk of rejection.

Application Preparation and Filing: Drafting and filing an international trademark application requires careful attention to detail to comply with the specific requirements of each jurisdiction. Corporate Raasta Consulting assists businesses in preparing and filing the necessary documentation, including completing application forms, gathering supporting documents, and ensuring compliance with procedural requirements.

Coordination with Authorities: Managing communications and correspondence with trademark offices in different countries can be complex and time-consuming. Corporate Raasta Consulting acts as a liaison between businesses and the relevant trademark authorities, facilitating communication, addressing inquiries, and resolving any issues that may arise during the registration process.

Compliance and Renewals: Once the international trademark registration is secured, ongoing compliance and maintenance are essential to ensure continued protection. Corporate Raasta Consulting provides guidance on compliance requirements, monitors trademark registrations for potential infringements, and assists with the renewal of trademark registrations as needed.

Legal Representation: In the event of trademark disputes or infringement allegations, businesses may require legal representation to protect their rights and interests. Corporate Raasta Consulting offers legal support and representation, including negotiating settlements, responding to cease-and-desist letters, and representing businesses in trademark litigation proceedings.