Trademark Registration Outside India – International Trademark
A Trademark is a name, business name, phrases, tagline, or presentation of a company, brand etc. in the form of “brand” or “logo”. Symbols like TM, SM, and ® stands for ‘TM’ stands for Trademark, ‘SM’ for Service mark and ® is used for that trademark which is registered and the registration certificate is issued TM and SM symbols signifies public at large that the company is claiming exclusive ownership of the product/services which are trademark and hence can be used by one who has filed a trademark application.
International Application under Madrid Protocol
The Madrid System is a convenient and cost-effective solution for registering and managing trademarks worldwide. In this system, with a single international trademark application, one can indicate the member countries where he is willing to obtain protection in such countries. Therefore, in this, a single application is required to be filed and the applicant is required to pay only one set of fees to apply for protection of the applicant’s trademark in member countries.
Where in case the applicant wants to update his records of international registration like change in name or address or change in ownership, he can do so by filing a single application.
Similarly, international registration may be renewed by filing an application directly with WIPO, and this renewal will have an effect in the countries where the application was originally filed.
Also, expansion of protection of international registration to cover more countries may be filed through WIPO by filing a “subsequent designation” application.
Requirement Before International Application
Trademark applications can be filed in 2 (Two) ways
- Underthe Madrid System
- Or by going to the respective country hiring their local advocates and then proceed with the application which is usually costlier than the Madrid system.
What Is Madrid Protocol
Though the application through the Madrid system has tried to be made an easy process as around 124 countries are signatory to it and one application is valid in all the countries, still there are pre-requirements to be fulfilled before filing an international application.
STEP 1:- Before filing an international application under the Madrid system, there should be a corresponding trademark application already filed in India.
STEP 2:- Several countries which are member to Madrid system require a single international application. The trademark applicant is applied through a fee that depend based on the class and country designated along with the handling fee which is Rs 2000 which shall be submitted to Indian Trade Registry.
STEP 3:- After the application being made the mark will be examined by all designated member countries where registration is sought and the same will proceed to registration.
However, if there already exists a similar trademark in the Madrid country or there is any other objection from any of the Madrid Country, then for replying to such objections, the applicant needs to file a reply to the trademark registry of such country and for this such applicant needs to hire a local attorney of such Madrid Country.
How to search Trade name registered under Madrid Protocol
The applicant is advised that before filing an international application, he should do the trademark search in order to find out if an identical or similar trademark already exists in his target markets.
Trademark search for Madrid Application may be done by visiting the official website of World International Property Organisation or you may click https://www3.wipo.int/branddb/en/ and check the brand name if it is already registered under Madrid Protocol.
Who may use Madrid System
The below said may use the Madrid System
- National of a country who is a member of the Madrid System or
- If you are domiciled in or
- have an industrial or commercial establishment in
Condition for filing International Registration
Before filing an international registration, an application in the home country has to be filed. The mark which is filed in the home country shall be known as the “basic mark”.
Fees for filing Madrid Application
The amount of fee which is payable in connection with an application for international registration under the Madrid system includes:
- Basic Fees;
- Complementary fee (or individual fee as the case may be) for each of the country and
- Supplementary fee for each class of goods and services which exceeds three
Where to submit Fees
International trademark registration fees should be submitted to WIPO. However, for certain countries, the application fee may be submitted to their home country. In India, you may submit application fees directly to the Indian Trade Mark office and this Office will then forward the fees to WIPO.
Examination of Madrid Application by WIPO
Once a Madrid Application is filed, WIPO carries out formalities of examination and in case, it found no issues in the application then International Registration is registered by it and then send details of each of the offices of the designated member countries which are listed in the International Application.
It is pertinent to note that the International Registration with WIPO does not itself give protection in the designated countries for which the international application s filed.
Examination of Madrid Application by designated Member Countries
International Registration is being examined by each of the designated member countries and the designated country has a right to either accept or reject the registration for their country. The common grounds of refusal may be:
- Where the sought for trademark conflicts with any of the existing rights or
- Where the office of the designated country receives an objection from a third party or
- Such sought for trademark is not distinctive or
- Where such sought for trademark is contrary to the public order or
- Where such sought for trademark is likely to cause deception.
Note: The designated member countries generally have a period of up to 18 months (may be extended further in case of opposition) after being informed by WIPO in order to notify refusal else they need to issue a Statement of Grant of Protection
Advantages of filing under the Madrid system
- Lower costs as compared to individual foreign filings
- Madrid system is cost effective for renewal, change of ownership, and change in address.
- Additional countries may be added to the application at a later stage.
- Pay the fee in a single currency.
- Manage subsequent designation with a single application.
Disadvantages of filing under the Madrid system.
- Where, in case, the home application or Registration at home country gets cancelled within five years of the date of the International Registration then such International Registration shall also stand cancelled to the same extent.
- In such a case, where International Registration is cancelled then the applicant has an option to file an individual application in such country with a claim of date back of such International Registration. In this case, the total fee may be higher than the national application fee of such country and such application will be filed in the first place.
International Registration in Other Countries:- a registration that is to be obtained in a country that is not a member of the Madrid protocol will require a separate national trademark application in the respective country.
List of Madrid Countries:
African Intellectual Property Organization (OAPI)1L
Antigua & Barbuda
Bonaire, Saint Eustatius and Saba3
Bosnia and Herzegovina
Pakistan (from 24 May 2021)
São Tomé and Principe
Eswatini* (formally called Swaziland)
Trinidad and Tobago
United States of America