1. Why should one apply for an International Trademark?
Protecting a brand outside the Country implies acquiring the trademark rights in each of the markets where you wish to market your products or services. Trademark rights are territorial and are only valid within the territory of a country (federal trademark) or a group of nations having established a regional trademark system (e.g., the European Union). However, one may take advantage of an alternative, more attractive, cost-effective, convenient and user-friendly route to acquire and manage their trademark rights abroad using the Madrid Protocol, an international treaty that India joined in 2013.
2. Can Foreigners apply for Trademarks in India?
Yes, foreign applicants can also apply for the registration of their trademarks in India. Under the Madrid Protocol, foreign applicants can file an international trademark application through the Country’s trademark office. The trademark office is also known as the Office of Origin. The Trademark Office receives the application and then forwards it to the WIPO.
3. Madrid Protocol
The Madrid Union currently has 100 members and organizations that are Contracting Parties to the Madrid Protocol, covering the territories of 116 countries.
It is administered under the World Intellectual Property Organization (WIPO), a United Nations specialized agency headquartered in Geneva, Switzerland. The Madrid Protocol allows you to obtain and maintain protection for your brand worldwide by providing a user-friendly, expeditious, and cost-effective set of procedures for the central filing of trademark applications and the central management of trademark registrations with effects in various countries.
Advantages of registering a trademark under the Madrid Protocol
Few benefits are listed below:
- Vvery convenient and a simple process.
- Worldwide recognition.
- All the trademarks have an expected date of renewal.
4. How can Foreigners opt for trademark application in India under the Madrid Protocol?
The trademark must be registered or applied for with the Indian Trademark Office to be eligible for filing. The Indian Trademark Office will rectify that the details in the international application are the same as those in the primary application.
WIPO (The World Intellectual Property Organization) Examination
When the application is received at WIPO, they will conduct a formal examination to verify the application’s compliance with the statutory requirements.
If all the steps are correctly made, WIPO will put down the International trademarks register application. It will be published in the WIPO Gazette of International Marks. The certificate of International Registration will be sent to the applicant by the WIPO.
Examination by the Trademark Office of the Particular Country
The Trademark Office of the particular Country will further examine the application for verification with the applicable laws of the specific Country. Within 12-18 months, they would inform WIPO about the acceptance or refusal of the application. WIPO will notify the applicant of the decision of the trademark office of the particular Country.
Advertisement and Registration
After the filing of the reply to the provisional refusal, it will be evaluated by the Indian Trade Marks Office in a few months. The mark will temporarily be advertised in the Indian Trade Marks Journal and open to third-party opposition for 4 months. On the expiry of the 4-month opposition period and the absence of any opposition, the mark would be granted protection by the Indian Trade Marks Registry. The registration will be kept valid for a period of 10 years. If no temporary denial is notified to WIPO within 18 months, the mark would ordinarily proceed towards advertisement, and it would follow the usual procedure as detailed above.
The application for the trademark renewal concerning the Madrid application designating India needs to be made at WIPO only. Then it shall be notified to the Indian Trademark Office by WIPO. It is essential to note that any change of applicant or ownership information, renewal of the registration, assignment etc., can also be made by just filing a single application at WIPO. It will reflect the same in all the designating countries.
5. MANAGING YOUR REGISTRATION
While the Madrid system offers the applicants many advantages to get their trademark protected in various markets, the system provides them even more valuable advantages regarding managing their mark after registration.
The process of obtaining trademark registration in India is a rather long one. Moreover, going by the general practice, one is likely to encounter objections and oppositions in registering the trademark. Therefore, it would work against persons making applications in India as their origin country because the likelihood of the mark being opposed or objected to or stalled due to the delays and backlogs in the Trademark Registry is very high. Therefore, any person or entity using India as their origin country risks the process being stalled during and even after the dependency period of five years.
The Madrid Protocol was introduced with the sole purpose of enabling easy, cost-effective and hassle-free registration across several countries; however, Applicants in India should consider factors like the general practice and timeline of the Trademark Registry. More importantly, the monetary losses incurred on designating several countries and engaging foreign counsels.