Here are frequently asked questions about international trademark regarding the prerequisites, fees and the validity of the mark. These can help you navigate the international trademark registration easily.
Is it important to register a trademark application internationally?
No, International trademark registration is not necessary for every trademark applicant, but it is recommended if you have any plans to broden your business in other countries.
What is Madrid e-filing process?
It is a treaty that provides for the International registration of trademarks by filing a single application in one language and in one set of fee in one currency.
Is Madrid e-filing process the only way to register an International trademark?
No Madrid e-filling process is not the only way to file trademark application internationally. You can submit a separate claim in the regional office(es) of the designated country.
Can the applicant file trademark application in more than one designated country?
Yes, the applicant chooses to file a trademark in more than one country. The applications made under the treaty can be done only in the member countries, separate applications will have to be filled for countries who are not a party to the agreement.
What is the term of registration?
The term of registrationfor trademark application under Madrid Protocol is 10 years from the date of application. It is further renewable every 10 years.
What does basic registration mean, while filing an application through this Protocol?
Basic registration means an application that is ongoing or is registered with the Office of Origin or appliaction that is used as the basis of Application filed under International Application.
What is an Office of Origin?
An Office of Origin is the trademark office of the applicant for International registration. Office of origin is necessary as it acts as a connection between the applicant and the office where the trademark is filed.
Is subsequent designation of country possible?
Yes, additional countries can be added in international registration through subsequent registration.
Can the applicant claim priority in an Application under International application?
Yes, a priority of an earlier filing of the same trademark registered or filed with the Indian Trademark Office can be claimed in an Application under International Application.
What languages can be used in an application under International application?
An Application under International Application can be filed in the following three languages:-
What are all documents required to make International applications?
- Power of Attorney
- Trademark in .jpeg format.
- Other basic trademark documents
Is it important for the mark to be identical while applying in the convention country?
Yes, the mark applied should be identical to the one applied with the regional office. As it is necessary that the trademark applied internationally has prior registration or should be in process.
What will be the impact on my International application if the Indian application is amended or fails to obtain registration?
If the Indian application is rejected or amended, your international application is considered abandoned and you will have to file an up to date application with the trademark office.
What is the dependency period in International trademark application?
First, five years of the trademark application is considered the dependency period of the trademark application. During this period the scope of protection of the trademark will depend upon the fate of the basic home registration or application.
What is the basic fee for all Indian applicants?
- CHF 653, where no replication of the mark is in Colour
- CHF 903, where any replication of the mark is in colour
What is the fee charged by the I.P Office of India?
If an Indian resident or an entity registered in India files international application they have to pay IPO handling fees of INR 5000
What is the complementary and individual fee?
A complimentary fee of CHF 100 is to be submitted with the designated of each designated country in respect of which an individual fee is not payable. An individual fee is the fixed fee for each country designated in an Application filed under Madrid Protocol.
Which is the appropriate office for the submission of fees?
The fees for filing an Application under International Application are to be submitted directly by the applicant to the International Bureau of World Intellectual Property Organization (IB of WIPO).
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