Introduction
Internationally the need to offer and promote the goods and services of various leading companies who had the global interest is increasing as the service industry is continuously changing and developing with time. In the light of these advances, intellectual property has to be protected and with the disappearance of the national borders, the need for the recognition and protection of intellectual property rights has become more important.
For goods and services that are provided by the Companies that operate abroad and in India, trademark registration is essential. In the international markets trademark will be of great significance and to protect the trademarks, Companies should register these trademarks in those countries where they provide goods and services.
Understanding the International Trademark Registration
- In the country where the trademark registration is done, only in that country, the rights arising from the registration would be available. To protect the trademark in different countries, the trademark has to be registered in all the countries where protection is required and requested for.
- Separate applications have to be made to the offices abroad where registration is requested, to obtain protection.
- A single application is enough in many countries for registration of the trademark, it is possible through certain registration systems.
- For international trademark registration, there are two fundamental application systems. One of them is considered as a regional system; Community Trademark (CTM) System and the other one is an international system and it is often preferred; Madrid System
Rules to be Followed to File an Application for International Trademark
The Indian government had passed the law of trademark, and it is applicable and enforceable only within the territory of India. Therefore, the trademark registered in India will be effective within India. Whereas, to obtain the protection of trademark in any other country, the same needs to be registered under the law of that country.
There are two ways of filing the international trademark Application
- The international application in each foreign country has to be directly filed to the Trademark Office of the country to get protection in any other country directly, and it can be done by following the rules and regulations of that country.
- A local law firm that is practicing in the trademark in that country has to be hired by the applicant to file the trademark registration.
- If a country does not follow the Madrid system then the applicant can register for the trademark as mentioned above.
There are three stages to file an international application under the Madrid system
- The office of origin.
- Office of the designated country
- World Intellectual Property Organisation (WIPO)
The Importance of the Madrid System
- An international registration under the Madrid system is equivalent to national registrations. For registration and managing trademarks worldwide, the Madrid System is considered a convenient and cost-effective solution.
- Madrid system consists of the guide to the international registration of marks, common regulations, Madrid agreement 1891, and Madrid protocol 1989.
- The Madrid agreement 1891 was enacted to bring a single an inexpensive process for registration of trademarks globally, it eliminates the need for filing a separate application in different countries but due to certain defects most countries never acceded to the agreement thus defeating the purpose for which it was set up
- The Madrid protocol 1989 was enacted to remedy the defects of the Madrid Agreement, this protocol is more flexible and accommodating than the agreement and a total of 106 countries are parties to the protocol
- According to the regulations (also known as common regulations) under the protocol relating to the Madrid Agreement, these regulations are equivalent to the rules that we have in respect of trademarks in India.
- There are 41 rules regarding the process and the procedure of filing an international application under the Madrid system as well as various other aspects.
- The guide to the international registration of marks is intended for applicants and holders of international registration as well as officials of member states of the Madrid union it even explains the essential provisions of the Madrid Agreement, the Madrid Protocol, and the common regulations and leads through various steps of registration
International Trademark Filing Under the Madrid System
- The first step towards International Trademark Registration is by filing a trademark application. India is an international treaty to the Madrid Protocol.
- The trademark registration can be done before the registrar of the trademark for specific countries by filing an international application under Madrid Protocol.
- The international trademark application is submitted to the Indian Trademark Office, they collect the application and after finding it in conformism with the Madrid protocol they transmit it to WIPO as an international application.
- According to the Madrid Protocol, based on trademark registration which is done in India, Companies can apply for trademark registration in different countries.
- The trademark application would be filed first in the Indian registry and after that, the application would be sent to WIPO and after the approval from WIPO, the application would be sent to the concerned country.
- As per the laws of the foreign country, each international application is processed and through the Indian government, all communications are done.
Advantages of the Madrid system
- Registrations in various countries
- Centralized filing procedure
- Convenient a single application to be filed
- Cost-effective registration in various countries
- Only in the case of refusal, a foreign agent needs to be appointed
- One expiry date and one renewal request to be filed
Conclusion
Before 2013, it was a very tedious process for companies to go through numerous countries and associates to get the trademark application registered. The Indian government acceded to the Madrid convention in the year 2013. According to which a methodology of registration of an international application to the parties in contract from India through the office of the Registrar of the trademark, was prescribed.