6 Simple Steps for an International Trademark Registration

Trademark registration is required to protect your brand from unauthorised use by others. Trademark registration, on the other hand, is restricted to certain geographical areas. As a result, when a trademark is registered in India, it only gives protection within the country. 

In order to protect a trademark outside of India, the owner must get international trademark protection. When a trademark owner obtains international trademark registration, they may use the mark outside of India and ensure that no one else applies for the identical mark in the worldwide market.

Madrid Protocol  

The Madrid Protocol governs international trademark registration. On 14 April 1891, the Madrid Agreement pertaining to international trademark registration was approved, and on 27 June 1989, the Madrid Protocol concerning the Madrid Agreement was adopted.

After India joined the Madrid Protocol, the Trade Marks Act of 1999 was revised to comply with the Madrid system. The Trade Marks (Amendment) Act, 2010, was approved on September 21, 2010, and India became the first country to implement international trademark registration under the Madrid Protocol.

Importance of Madrid Protocol

• The Madrid Protocol permits trademark registration in the Madrid Union's member nations. 
• There are 112 members of the Madrid Union, who represent 128 nations. 
• By filing a single application with the national trademark office or the office of origin, a trademark holder can achieve international trademark registration under the Madrid Protocol.
• The Registrar of Trademark Office is the office of origin for filing an international trademark registration under the Madrid Protocol if the business is registered in India. 
• The trademark registration application will be processed by the origin office and filed with the Intellectual Property Organisation in Geneva.

Requirements for International Trademark Registration

An applicant must assure that the below-mentioned requirements are fulfilled before applying for International Trademark Registration

• The applicant must be a resident of India, a citizen of India, or have a legitimate business or commercial enterprise in India.
• The applicant must either hold a registered trademark with the Indian Trade Marks Registry or have applied for a national trademark in India. The international application is based on the national trademark application/registration.
• The applicant should file an international trademark application for the same trademark for which a national trademark registration has been secured or for which the national trademark application has been filed.
• The international application should include the same list of services and items as the national trademark registration or application.
• In the international application, the applicant must select one or more Madrid Protocol member nations in which he or she wishes to be protected.

Process of International Trademark Registration under Madrid Protocol

The process of international trademark registration under the Madrid Protocol is as follows:-

Search for trademark

Before filing for international trademark registration, the applicant must first do a trademark search. To see if any similar registered trademarks exist, the applicant can execute a trademark search on the WIPO's Global Brand Database. In any of the Madrid Protocol nations where the applicant intends to seek trademark registration, the applicant must confirm that no similar registered trademark exists. The application will be refused if a similar trademark already exists.

File the application for registration

Following the trademark search, the applicant must complete Form MM2 for international trademark registration (E). Because it is the office of origin for Indian enterprises, the user must file the international trademark registration application with the Office of the Registrar of Trademarks in India. The application will be processed and verified by the Registrar of Trade Marks. The Registrar will file it with the World Intellectual Property Organisation (WIPO) in Geneva when it has been verified.

Application to be examined by WIPO

WIPO will consider the trademark registration application when the Registrar of Trade Marks Office delivers it to them. The trademark is entered in the International Register and published in the WIPO Gazette of International Trade Marks when the WIPO deems the registration application adequate.

Notification by WIPO

Every Madrid Protocol member country where the applicant decides to acquire registration will get a notification from the WIPO on the worldwide trademark application. The international trademark registration application will be examined by the member nations in accordance with trademark legislation and guidelines. Within 12 to 18 months of receiving the trademark registration application, member nations will submit their inspection report and notify the WIPO of their approval or rejection.

Opposition to Trademark Registration

If any member nations object to the trademark registration application, they must notify the WIPO in a defined manner. The objection to a trademark application shall be handled directly between the trademark applicant and the Madrid Protocol member nation in question. Response, appeal, hearing, and prosecution are all steps in the opposition process. The World Intellectual Property Organisation (WIPO) will be involved in the whole opposition process.

Approval of International Trademark Registration

When the member nations accept the application, the trademark will be registered for ten years under the Madrid Protocol in the corresponding designated member countries. After the registration application is approved, the applicant will receive a statement of the grant, which validates the international trademark registration of an Indian trademark.

Conclusion

Trademark registration is limited to particular geographical locations. When the country's boundaries are crossed, any national trademark registration expires. It prevents the owner from using his or her Trademark Registration rights outside the nation. That is, for each country where you wish to build a brand presence, you must file a new trademark application. If you register your trademark, it will get international recognition and protection.

Online legal India not only helps you register an international trademark but also provides you with all of the required information. They and their employees provide the best services, and many people appreciate them. You may get the best services for a fair price and in a short amount of time. The experts will go through the benefits and documents required for trademark registration in considerable detail.

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