Overview of International Trademark Registration

Trademark registration is territory-specific, meaning a trademark registered in one country is not valid in another. To secure protection in multiple countries, you must file separate trademark applications in each jurisdiction.

The Madrid Protocol

Introduced in 1996, the Madrid Protocol provides a centralized system for international trademark registration, allowing applicants to register a mark in multiple countries through a single application.

How to Apply for International Trademark Registration?

1. Filing Through the Trademark Office of Origin

   • The application must be submitted through the trademark office of the applicant’s home country (Office of Origin).
   • For Indian businesses, the Office of the Registrar of Trademarks, India serves as the Office of Origin.

2. Processing at WIPO (World Intellectual Property Organization)

   • The Office of Origin processes the application and forwards it to the International Bureau of WIPO in Geneva.

3. Examination and Publication

   • If the trademark meets all requirements, it is recorded in the International Register and published in the WIPO Gazette of International Marks.
   • WIPO issues a certificate of international registration and notifies all member countries designated in the application.

4. Timeframe for Objections

   • The designated national offices have a strict 12 to 18-month period to raise any objections.

Benefits of International Trademark Registration

Legal Protection

International trademark registration provides legal protection against unauthorized use by third parties. A registered trademark makes it easier to prove ownership in court and take legal action against infringement.

Business Opportunity

A trademark is an intangible asset that contributes to brand growth. Well-established trademarks, such as Nike and McDonald's, generate royalties through licensing agreements, offering additional revenue streams.

Unique Identity

An international trademark ensures that your brand and products receive global recognition, setting them apart from competitors.

Beneficial for Online Businesses

For e-commerce businesses, an international trademark helps protect brands from unauthorized use across different markets and digital platforms. It also boosts consumer confidence and global reach.

Faster Global Recognition

Once your brand is registered internationally, it gains credibility and market trust, making it easier to expand across borders. Early registration helps prevent confusion and legal conflicts.

Changes and Renewal

An international trademark is valid for 10 years from the date of registration. Renewal is straightforward—you only need to file the same application with WIPO.

Protection During Import/Export

Trademark registration helps prevent counterfeits and protects your brand in international trade. In case of infringement during import or export, you can take legal action to safeguard your business.

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Requirements for International Trademark Registration

To meet the registration requirements under the Madrid System, an applicant must:

• Have a business in a Contracting Party
• Be domiciled in a Contracting Party
• Be a national of a Contracting Party

Note: To use the Madrid System, an applicant must have a connection with one of its members (Contracting Parties). This determines the office of origin for filing the application.

For example, if an applicant is a national of Australia or has a business in Australia, they must file their application through Australia’s Intellectual Property (IP) Office, as Australia is a member of the Madrid System.

System of International Trademark Registration

The international trademark registration process consists of three key stages:

1. Trademark Search

Before filing an application, conducting a trademark search is crucial to ensure there is no similar trademark already registered in the target market. Applicants can use WIPO’s Global Brand Database to verify availability based on:

• Text used in the trademark
• Images or logos in the trademark
• Goods or services class in which the trademark will be applied
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2. Filing the Application for Registration

Once the trademark availability is confirmed, the applicant can proceed with the registration process. Key requirements include:

• The trademark must be registered or applied for in the home country (office of origin).
• If the applicant is from a Madrid System member country, they can apply via the Madrid System.
• The home country's trademark office verifies the application and forwards it to WIPO for further processing.
• WIPO then examines and transmits the application to the designated countries where protection is sought.
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3. Management of International Trademark

Once the international trademark is registered, its management is centralized and simplified under the Madrid System, including:

• Renewal every 10 years
• E-payment of fees
• Expanding geographical coverage by applying in additional countries
• Appointing new representatives
• Transfer of ownership
• Cancellation of the trademark

International Trademark Registration Procedure

1. Applying Through National Trademark Office (Office of Origin)

• Before filing an international application, ensure that you have a registered trademark in your home country. If not, file a Basic Trademark Application with the Trademark and IP Office of your country.
• After completing the Basic Trademark Application, you can apply for International Trademark Registration through the same office, which will then forward your application to WIPO.
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2. Examination by WIPO

• WIPO (World Intellectual Property Organization) reviews your application.
• Upon approval, your trademark is recorded in the International Register and published in the WIPO Gazette of International Marks.
• WIPO will issue a certificate of international registration and inform the IP Offices of all the designated countries.

Note: At this stage, protection of the international registration is not yet granted. The final decision is made after examination by the Trademark Offices of the designated countries.

3. Examination by National Offices

• The IP Offices of each designated country will assess the trademark within 12 to 18 months.
• WIPO will record and notify the applicant of their decisions.

If a country's IP Office refuses protection, either fully or partially:

• This decision does not affect other countries' decisions.
• The applicant can challenge the refusal directly before the respective Trademark Office under its national laws.

If a country's IP Office grants protection, they will issue a Statement of Grant of Protection.

4. Validity and Renewal

• International trademark registration is valid for 10 years.
• It can be renewed indefinitely at the end of each 10-year period.

Fees for International Trademark Registration

The Madrid System requires three types of fees:

1. Basic Application Fee – The fundamental cost for registering the mark.
2. Complementary Fee – Charged for each Contracting Party (country) where protection is sought.
3. Supplementary Fee – Charged for each class of goods or services covered by the trademark.

Additionally, some handling charges may apply.

• In India, the Office of Origin charges 2,000 for verifying and forwarding the application to WIPO.

Timeline for International Trademark Registration

• Processing times vary by country, but no country can take longer than 18 months.
• If no refusal is issued within this time, the trademark is considered registered in that country.
• If an office refuses registration, they will issue a letter of refusal, specifying:
  • Required modifications
  • Reasons for refusal
  • A deadline to submit changes