Guide To International Trademark Registration Process In India

Published on 31 Jan 2020 by Shivi

Trademark Registrations under the Trademark laws in India are applicable and have force only within the country, and any business or individual who needs to obtain protection under Trademark, needs to apply for Trademark registration as per the laws prescribed by that country. Obtaining international Trademark registration is not easy, however, the changes to the international Trademark process in India has made it easier for applicants to obtain a Trademark in other countries easily. Let’s have a look at the process of International Trademark registration process in India, and requirements to file an international Trademark application.

Methods To Obtain an International Trademark Registration

There are two methods to obtain Trademark registration in foreign countries from India. These processes of international Trademark registration are as follows:

International Application In Each Foreign Country

To obtain international Trademark in a foreign country, an international application must be filed directly to the Trademark office of the foreign country by following the laws and regulations of that country. This means that in the case an applicant wants to obtain Trademark protection in more than one foreign country, they need to file a separate Trademark registration application in each country as per their individual and different IPR laws.

International Application Under The Madrid System

The other process is the Trademark registration process as per the  Madrid Protocol which came into operation in 1996 and the Madrid Agreement which dates from 1891 governs the system of international trademark registration. Under the Madrid Protocol, a mark can be registered in multiple countries by filing an application for international trademark registration through the trademark office of the country in which the applicant resides. In the case of India, the Madrid Protocol was adopted in 2013 owing to globalisation and international ease-of-access.

Under the Madrid Protocol, the Trademark registration application can be filed with the Office of the Registrar of Trademark in India along with the requisite documents. The Registrar will process the application and upon verification, process the Trademark application and file it with the Intellectual Property Organisation in Geneva.

The Intellectual Property Organisation evaluates the Trademark application and if the trademark application is found fit, then the mark is recorded in the International Register and published in the World Intellectual Property Organization (WIPO) Gazette of International Marks. 

The International Bureau then provides a certificate of international Trademark registration and notifies each of the country contracting to the Madrid Protocol about the Trademark of the applicant. However, under the Madrid Protocol, every country has been given the right to refuse the protection of the mark and notify the Bureau within 12-18 months with its objections.

Any objection to the registration of the trademark must be made to the International Bureau in the prescribed format. If there are no refusals by any of the countries, then the protection of the mark in each of the country is the same as if it had been registered by the Office of that country.

Once an international trademark is registered under the Madrid Protocol, the mark is registered for 10 years. International trademark registrations can be renewed at the end of the 10 year period directly through WIPO or through the concerned office of origin.

Requirements for Obtaining International Trademark Registration

There are three main requirements for obtaining an international trademark registration in India:

  1. The applicant must be a national of India or domiciled in India or have a real and effective business or commercial establishment in India.

  2. The applicant must hold a national Trademark application or Trademark registration with the Indian Trade Marks Registry for the mark. 

  3. The applicant must choose one or more other member countries of the Madrid Protocol, where they want to obtain Trademark registration.

Benefits Of Madrid Protocol Trademark Registration

Filing for Trademark registration under the Madrid Protocol comes with the following benefits:

  1. Only one International application needs to be filed. 

  2. The application can be filed in any one language out of English, French or Spanish irrespective of the language of contracting party. 

  3. The Government filing fees for each foreign country shall be paid in India and in one currency only i.e. Swiss Franc (CHF). 

  4. All the applications filed under the Madrid convention are allotted only one registration number valid in all territories,

However, countries like Nepal, Pakistan, Bangladesh, Sri Lanka, Myanmar, Malaysia, Hong Kong, Indonesia, Iraq, Kuwait, Mauritius, Saudi Arab, Taiwan, Thailand, Canada etc. are not part of Madrid protocol, and in the case a person from India wants to get Trademark registration these countries, then separate applications needs to be filed in each country.

Countries In Which Madrid Protocol Is In Operation

An international Trademark application under the Madrid Protocol can be filed in the following countries:

  1. African Intellectual Property Organization (OAPI)
  2. Albania
  3. Algeria
  4. Antigua and Barbuda
  5. Armenia
  6. Australia
  7. Austria
  8. Azerbaijan
  9. Bahrain
  10. Belarus
  11. Belgium
  12. Bhutan
  13. Bosnia and Herzegovina
  14. Botswana
  15. Bulgaria
  16. Cambodia
  17. China
  18. Colombia
  19. Croatia
  20. Cuba
  21. Cyprus
  22. Czech Republic
  23. Democratic People’s Republic of Korea
  24. Denmark
  25. Egypt
  26. Estonia
  27. European Union
  28. Finland
  29. France
  30. Georgia
  31. Germany
  32. Ghana
  33. Greece
  34. Hungary
  35. Iceland
  36. India
  37. Iran
  38. Ireland
  39. Israel
  40. Italy
  41. Japan
  42. Kazakhstan
  43. Kenya
  44. Kyrgyzstan
  45. Latvia
  46. Lesotho
  47. Liberia
  48. Liechtenstein
  49. Lithuania
  50. Luxembourg
  51. Mexico
  52. Monaco
  53. Mongolia
  54. Montenegro
  55. Morocco
  56. Mozambique
  57. Namibia
  58. Netherlands
  59. New Zealand
  60. Norway
  61. Oman
  62. Philippines
  63. Poland
  64. Portugal
  65. Republic of Korea
  66. Republic of Moldova
  67. Romania
  68. Russian Federation
  69. Rwanda
  70. San Marino
  71. Sao Tome and Principe
  72. Serbia
  73. Sierra Leone
  74. Singapore
  75. Slovakia
  76. Slovenia
  77. Spain
  78. Sudan
  79. Swaziland
  80. Sweden
  81. Switzerland
  82. The Syrian Arab Republic
  83. Tajikistan
  84. The former Yugoslav Republic of Macedonia
  85. Tunisia
  86. Turkey
  87. Turkmenistan
  88. Ukraine
  89. United Kingdom
  90. United States of America
  91. Uzbekistan
  92. VietNam
  93. Zambia
  94. Zimbabwe

If you need assistance with your Trademark registration in India and filing an international Trademark application, you can call Legistify at 8468833013 or send us an email at [email protected] to talk to our Trademark lawyers in India.

Tags: Trademark 
Tags:
Trademark 

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