International Trademark Registration – An Overview

Trademark registration is restricted to specific territories. That is, you must file a separate trademark application for each country where you want to mark your presence. It is important that you act quickly. Any national trademark registration expires at the end of the country’s boundary and does not allow its owner to pursue Trademark Registration rights beyond that boundary.

The Madrid Protocol was established in 1996 with the goal of registering a mark in multiple countries. The Madrid agreement describes the international trademark registration system. All you have to do is submit an application for International Trademark to the applicant’s trademark office.

Under the Madrid Protocol, the person who wants to register a trademark must file an international trademark with the trademark office, also known as the place of origin. If a business takes place in India, the place of origin is the Office of the Registrar of Trademarks in India. The office of origin will take care of the trademark application and register it with the Intellectual Property Organisation in Geneva.

If your trademark application is found to be perfect according to the standards, your mark, logo, or word can be recorded in the International Register and published in the World Intellectual Property Organisation (WIPO) Gazette of International Marks. The International Bureau issues a certificate of international registration and notifies countries that have signed the Madrid Protocol that the trademark has been registered. The Madrid Protocol imposes a strict time limit of 12 and a half years for issues raised by designated offices.

Documents Required for International Trademark Registration

The Indian Trademark Office requires an international trademark application under Madrid Protocol to be accompanied by the following:

• An application form
• Power of attorney
• Payment of handling fee
• Payment of international designation fee payable to WIPO.

Process of International Trademark Registration

Step 1: Applying Through National Trademark Office

Before submitting an international application, verify that you are registered; if not, submit an application to the nation’s Trademark and IP office. Basic trademark application is the name of the initial application filing. Once the basic trademark application process is complete, you can visit the same office to apply for an International Trademark search, which will then be forwarded to WIPO.

Step 2: WIPO examination

Your application is reviewed by the World Intellectual Property Organisation (WIPO). Once accepted, your international mark is published in the WIPO Gazette of International Marks and added to the International Register. At that point, WIPO will notify the IP Offices in every domain where you have applied to have your mark secured and send you an authentication of your international registration.

Be aware that at this point in the process, there can be no assurance of a worldwide registration. After careful consideration and selection by the IP/Trademark Offices in those domains, it has just been decided.

Step 3: Examination By National Offices

When the appropriate period of time (12 or 18 months) has passed since their enactment, the IP Offices of the relevant regions will decide where you need to protect your mark. The International Register will be updated with the Trademark Offices’ selections, and WIPO will let you know.

If an IP Office decides not to fully or partially secure your mark, this decision has no bearing on the decisions made by other Offices. According to its laws, you can directly contest a refusal decision before the concerned Trademark Office. If an Office accepts responsibility for guaranteeing your mark, it will issue an announcement of assurance award.

This International Trademark is valid for 10-years. After 10 years, you can renew it, if you want to.

Direct Application for International Trademark Registration

To directly request trademark protection in any nation, an international application must be submitted to that nation’s trademark office in accordance with its legal requirements.

Documents Required

• Logo replica (optional)
• Form 48
• Certificate of registration for Udyog Aadhar
• Certificate of incorporation or partnership deed
• Identity of signatory document
• Address on signatory proof.

Process of Direct Filing

Step 1: Apply to the Appropriate National Trademark Office

Making an application to the relevant national trademark office is the first step in the procedure. You must file Form MM2 and in the US you will have to file MM-18E in order to submit an application to the national office. The application will be examined by the national office after submission.

Advantageous for Online Operators

The registration is essential to the development of the e-commerce industry. It somehow makes it possible for your product to be sold to consumers abroad if you are engaged in online product sales.

Step 2: Examination of Trademark Application by the WIPO

After the national office has approved your application, the WIPO will take it into consideration. This evaluation’s main purpose is to verify that your application is error-free and it has been forwarded to be approved and published in the WIPO’s International trademark gazette.

Step 3: Examination of Trademark Application by the National Trademark Office of Each Requested Country

The appropriate national trademark authorities will therefore examine your application at this stage for any errors.

Step 4: Domestic Procedure

A common element of the national procedure is publishing the application in their national gazette or bulletin to provide other trademark owners a chance to express their concerns.

Step 5: Provisional Rejection

The national office has one year to file a notification of provisional denial, and it is extended to 18 months or more if there are issues with pre-registered trademarks. If all is well the trademark will be registered without any delay.

Madrid Protocol

The Madrid protocol system allows for the global registration of trademarks through a single application that can include many nations. The possibility of using a single registration to cover a variety of nations has major benefits for portfolio management and financial savings.

Documents Required

• A business’s or a registered user’s proof
• The applicant’s PAN card and Aadhar card
• Logo details
• Registration as an MSME
• Trademark application number or trademark registration certificate (if the trademark is pending in India).

Process Under Madrid Protocol

Step 1: International Application Filing Through an Attorney

An attorney may assist with the filing of the international application. But this is possible only after receiving proper authorisation from the applicant on Form TM-48. The appropriate stamp duty must be paid according to the state.

Step 2: Document Submission

A second application in Form MM-18(E) must be filed if the foreign country is a member of the European Union, and the applicant must specify a second language if the country is the US other than French, German, Italian, or Spanish. The international application must be fulfilled in the prescribed Form MM-2(E).

Step 3: Verification

When an international application is received, the registrar must ensure that it complies with the Madrid Protocol’s requirements before sending it to WIPO. The WIPO transfers it to the relevant foreign government after verification.

Step 4: National Registration

The international registration is dependent on the continued effectiveness of the local registration for a period of five years; otherwise, the international registration will no longer be protected if the local registration expires or the TM application is rejected, withdrawn, or treated as abandoned within five years.

Step 5: WIPO Application

International applications that come from offices of origin are carefully inspected by the WIPO. The abnormalities are normally intimated through the office of origin three months following the date of notification. when all or portions of the goods/services are accepted for protection under the international registration.

Benefits of International Trademark Registration

Difference Between International Application in Each Foreign Country and Madrid Protocol

International Trademark Registration Cost

Each country’s processing time varies, but none exceeds a year and a half. If the trademark is not dismissed within this time frame, it is considered registered in the relevant country. The three components that make up the registration fees for processing an application under the Madrid System are as follows:

Application Fee

This is basic for registering the mark.

Complementary Fees

The application is prepared for each contracting party, i.e. country, where the applicant wishes to protect his mark. In a minimal number of instances, complementary fees are the only individual fees.

Supplementary Fees

There might also be some handling fees levied by the office of origin in order to verify and send the application to WIPO. In India, the handling fee is set at ₹2000.

Why AccountsWaale

Here is why you should choose AccountsWaale for International trademark registration:

• A comprehensive search of the TM database is performed
• We draft the authorisation letter so we can register your trademark for you
• Our experts help you choose the classes you should apply for, and we fill out and submit applications to the Registrar
• We update you frequently until the registration process is completed
• Throughout the process, you receive the best support, and all of your questions are addressed.