Trademark Registration For Foreigners In India

Trademark is a unique name, symbol, words, letters, or graphics representing a company or business. The goods and services provided by a business owner or entrepreneur will contain the trademark of the company. Registration of a trademark will protect its unique position.

When a trademark is registered in a particular country, the trademark will obtain protection only in that country. If the trademark owners want international trademark protection, they must register the trademark in the respective foreign country/countries they wish to receive protection. To avoid the multiplicity/duplicity of trademark applications in each country and to decrease the cost, the Madrid Protocol came into force.

Madrid Protocol Trademark Registration

According to the Madrid Protocol agreement, the trademark owners can register their trademarks in multiple countries (who are members of the Madrid Union) by filing a single application. The WIPO (World Intellectual Property Organization) regulates the Madrid Protocol. India became a member of the Madrid Protocol on 8 July 2013.

The foreign proprietors having an international trademark must register their trademark in India for protecting it from any infringement that may take place in India. They can file a trademark application in India for obtaining trademark registration when their country is a member of the Madrid Protocol. 

A foreign trademark owner can apply for trademark registration for more than one product or service in India since India acknowledges multi-class applications. The goods and services are divided into 42 classes for trademark registration in India.

Trademark Registration Under Madrid Protocol

Before applying for trademark registration in India, the foreign trademark owner should arrange the relevant documents for registering them and must have obtained registration for the trademark in his/her country. Foreigners cannot directly apply for trademark registration in India without registering it in their home country unless their principal place of business is in India.

The process of applying for trademark registration in India under the Madrid Protocol by foreigners are as follows:

• The registration application needs to be made only at WIPO, which will notify the Indian Trademark Office. 
• The Registrar will record the particulars of the international trademark registration after receiving advice from the WIPO about the international registration. 
• After recording the international trademark registration particulars, the Registrar may refuse the international trademark registration in India after hearing the applicant and inform WIPO within 18 months from the date on which the advice was received from WIPO if the Registrar is satisfied that: 
  • Trademark protection in India should not be granted for such international trademarks.
  • Trademark protection in India should be granted with conditions or limitations.
• When the Registrar finds nothing for refusing the grant of protection in the international registration particulars, he will cause such international registration to be advertised in the prescribed period and manner. 
• When there is no opposition for the grant of international trademark registration and the time for notice of opposition has expired, the Registrar will notify WIPO of its acceptance of the extension of protection of the trademark for international registration within 18 months of the receipt of advice from WIPO. 
• When the Registrar fails to notify WIPO of its acceptance and the opposition date has expired, it will be deemed that the protection has been extended to the international trademark.

Benefits of Trademark Registration in India

When foreigners obtain trademark protection in India under the Madrid Protocol, they get the exclusive right to use it for their products sold or services given in India. They will get recognition from Indian customers and markets. It differentiates their products or services from other similar products or services.

In case of infringement or misuse of the trademark, foreigners who have a trademark registration in India can take legal action against the third party. The international trademark registered under the Madrid Protocol gets the same protection as a trademark registered in India. They can sue anyone who uses their registered trademarks without authorised permission.

Validity of Trademark Registration

The international trademark that has obtained the trademark registration in India will be valid for ten years and, they can be renewed for another ten years from the expiry of the preceding period. A grace period of six months is granted for foreigners to renew their trademark registration in India upon payment of the surcharge prescribed by the trademark rules. 

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