International Trademark Registration under Madrid Protocol
Trademarks Registration under Indian Trade Marks Act, 1999 assures the protection of your registered Trademark at pan India basis. This assured protection acts as limitation for those who see their business at international level. On engagement of cross boarder activities, establishment of the business identity at international level is equally important through trademarks registration.
Today, in India, fewer businesses find their Brand & Logo registration at international level due to the lack of awareness of this method and treaties. To protect your business in targeted nations, the application for international trademarks can be done only post filing of application of registration under Indian Trademarks Act, 1999.
International brand name and log registrations are governed by World Intellectual Property Organisation (WIPO) with Madrid Protocol. India is a member country for Madrid protocol since July, 2013 in order to protect the interest of registered trademark owner through international trademark registration. At present, 100 countries have joined and are member of the Madrid protocol. Under Madrid protocol, once the application under origin country (here India) is made, the applicant can proceed for making an application for registration of Trademark under multiple countries.
- File an application in Home Country:
Pre-requisite for filing an application under Madrid protocol is to first file an online trademark registration application at own country with office of origin (Trademark Registry). The business entity or proprietor of an Indian business is first required to make an online trademark registration application under Indian Trademarks Act, 1999 by filing of TM – A form with Government fees as applicable. How to register a brand name or a trademark in India? Then application for registration under several member countries of the protocol can be made. The application for registration under several countries can be made through one application, however the application fees will be varied based on the number of countries and the country selected.
- Examination of Application filed:
The international application for brand and logo registration is filed with Trademarks Registry in India referred as “office of origin”
The “office of origin” for this purpose will examine the application and if deems fit, can forward the application to WIPO for further examination and filing of an application to designated country for which registration application is made.
On formal examination if the regulatory find any discrepancy or defect in the application filed, the same will be communicated to the applicant. The applicant shall make the defects good in the period prescribed, failure of which can lead to abandon the application.
When the application is found in line with regulations, it will be register in the international register and further will be published in the WIPO Gazette. WIPO will issue a certificate of international registration and will forward the applications simultaneously to the designated countries chosen in the application.
- Examination by the designated countries:
The designated countries, on receipt of the application, will proceed for an extensive search and verification. The application will pass through substantial examination by each country where extended protection is demanded. The comprehensive search shall be completed within the prescribed time limit with communicating the acceptance and rejection of the application.
The result of the search will be notified by WIPO to the applicant. The accepted application will receive a statement of grant of registration with a validity period of 10 years from the date of application.
On refusal of the application by the trademarks office of the concerned country, further actions of resolving objection through hearing and appeal will be processed by the said trademarks office without any participation by WIPO. The refusal or acceptance of the application will be intimated to WIPO by a statement in writing by the office. The reason of refusal or the statement of grant will be communicated to WIPO, which will be registered in the international register and intimated to applicant subsequently. The same will also be published in the Gazette of WIPO.
The application filed under Madrid protocol will not grant to registration at international forum rather the registration will be granted under number countries targeted for business and are contracting party of the Madrid protocol. With a single application under this protocol, the applicant can cover more than 90 countries. The set of fees will also be payable at once in one currency and the application will be filed in single language being English irrespective of the countries targeted.
The damaging part of the application will be the cost of filing and processing after filing of application. Where filing of application does not require the local attorney, but if the application filed with other country faces objection or hearing, an attorney of the said country should be appointed. Also, the trademark or company logo registration application filed will be compared not only with the database of the Indian Registry but also with the applications filed with other countries. Therefore, the brand name and the company logo should be chosen carefully after ample search with possible resources with the Indian attorney.
CS Prachi Prajapati
Company Secretary with a forte in content writing! Started as a trainee, she is now leading as a Content Writer and a Product Developer on technical hand of LegalWiz.in. The author finds her prospect to carve out a valuable position in Legal and Secretarial field.
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