International Trademark Registration – Procedure and Benefits

A trademark means a brand or logo containing the symbol, letters, words, numbers or phrases associated with the goods or services of a company or individual. The trademark is an identity of a company or individual’s business that helps consumers differentiate the trademarked goods or services from others. Thus, trademark registration is necessary to protect its unauthorised usage by others.

However, trademark registration is limited to territories. Thus, when a trademark is registered in India, the registration provides protection only within India. A trademark owner needs to obtain international trademark protection for its protection outside India. When trademark owners have international registration, they can apply the mark outside India and ensure that third parties do not apply for the same trademark in the global market.

Madrid Protocol

The Madrid Protocol governs international trademark registration. The Madrid agreement relating to the international trademark registration was adopted on 14 April 1891, and the Madrid Protocol relating to the Madrid Agreement was adopted in Madrid on 27 June 1989.

The Trademarks Act, 1999 was amended to comply with the Madrid system after India became a member of the Madrid Protocol. On 21 September 2010, the Trademarks (Amendment) Act, 2010 was passed, and the international trademark registration under the Madrid Protocol was introduced in India.

The Madrid Protocol allows trademark registration in the countries that are members of the Madrid Union. The Madrid Union has 112 members, covering 128 countries. The trademark proprietor can obtain international trademark registration under the Madrid Protocol by filing a single application in the national trademark office or office of origin.

Where the business is registered in India, the Registrar of Trademark Office is the office of origin to file an international trademark application under the Madrid Protocol. The office of origin will process the trademark registration application and record it with the Intellectual Property Organisation in Geneva.

For example: Micromax, India’s mobile phone manufacturer, recently obtained the 1.25 millionth international trademark registration for its trademark ‘MICROMAX’. Thus, the trademark ‘MICROMAX’ has protection in over 110 countries now. The international trademark registration for the ‘MICROMAX’ trademark was filed under the Madrid Protocol to obtain international registration.

Pre-requisites for International Trademark Registration

The trademark applicant must ensure that the following requirements are met before applying for international trademark registration:

• The applicant should be domiciled in India, be an Indian national or have an effective and real business or commercial establishment in India.
• The applicant must have a trademark registered with the Indian Trademarks Registry or must have applied for a national trademark application in India. The national trademark application/registration acts as the basis of the international application.
• The applicant should apply for an international application for the same trademark for which the national trademark registration is obtained or mentioned in the national trademark application.
• The list of services and goods in the international application should be the same as the national trademark registration or application.
• The applicant must choose one or more Madrid Protocol member countries where he/she wants protection in the international application.

International Trademark Registration Process Under Madrid Protocol

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

Trademark Search

The applicant must first conduct a trademark search before applying for international trademark registration. The applicant can conduct a trademark search on the WIPO’s Global Brand Database to determine if any similar or identical registered trademark exists. The applicant must ensure that no similar or identical registered trademark exists in any of the Madrid Protocol countries where he/she is planning to apply for trademark registration. If a similar or identical trademark exists, the application will be rejected.

File Registration Application

After the trademark search, the applicant must file the international trademark registration application in Form MM2(E). The applicant should file the international trademark registration application with the Office of the Registrar of Trademarks in India, as it is the office of origin for Indian businesses. The Registrar of Trademarks will process and verify the application. After verification, the Registrar will file it with the World Intellectual Property Organisation (WIPO) in Geneva. The applicant must file the international trademark application electronically through the official IP India website and pay the handling fee.

Examination of Application by WIPO

After the Registrar of Trademark Office sends the trademark registration application to WIPO, the WIPO will examine the application. When the WIPO deems the registration application appropriate, the trademark is recorded in the International Register and published in the WIPO Gazette of International Trademarks.

Notification of Trademark Registration by WIPO

The WIPO will issue a notification regarding the international trademark application to each Madrid Protocol member country where the applicant chooses to obtain registration. The member countries will examine the international registration application as per the trademark regulations and rules. The member countries will submit their examination report and notify acceptance or refusal of the application to the WIPO within 12 to 18 months of receipt of the trademark registration application.

Opposition to Trademark Registration

If the member countries have any opposition to the trademark registration application, it must be submitted to the WIPO in a prescribed way. The opposition proceedings to the trademark application will be conducted directly between the trademark applicant and the concerned member country of the Madrid Protocol. The opposition procedures include response, appeal, hearing and prosecution. The WIPO will be involved in the whole opposition procedure.

Grant of International Trademark Registration

The trademark will be registered in the respective chosen member countries under the Madrid Protocol for ten years when the member countries accept the application. After the acceptance of the registration application, a statement of the grant will be issued to the applicant, which certifies the international trademark registration of an Indian trademark.

Benefits of International Trademark Registration

Legal protection

International trademark registration legally protects the trademark from international infringement of that trademark. The registered trademark gets protection against a third person who uses it without authorised permission in the foreign country where it is registered. It becomes easy to prove the legal right in the trademark before the court when it is registered. 

Business opportunity

Trademark is an intangible asset of a business and plays a significant role in the brand’s growth. A successful trademark provides the business with an opportunity to earn money. The trademark owner can also licence trademarks to a foreign entity when it is registered internationally. Thus, international trademark registration enables the success of the brand or product. Businesses like Nike or McDonald’s have earned royalties through licensing agreements due to obtaining an international trademark registration.

Unique identity

International trademark registration provides global recognition for a product. International trademark registration helps fight against infringement, ensuring that the trademark owners get an exclusive right to one of their most valuable assets.

Beneficial for online operators

International trademark registration plays a significant role in the growth of an e-commerce business. When a business is involved in selling products online, it paves the way for the product to be available globally to international consumers. Once the product has gained recognition in the global market, it becomes easy for the trademark to gain popularity amongst a vast consumer base. It is better to obtain international trademark registration for such products to avoid confusion amongst the buyers regarding the product.

Protects brand during export or import

The international trademark registration protects the trademarked product from any trademark misuse in foreign countries by foreign parties. As the trademark gets recognition in foreign countries, it is prone to be copied or used fraudulently by other parties to gain customers using the mark. In case of any such infringement conducted during import or export, the international trademark registration gives the right to take legal action against such infringement and protect the trademark associated with a product or service.

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