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International Trademark Registration

Since India is a party to the Madrid Protocol, the process of registering and protecting your trademark in a number of countries has become very easy. Currently, there are 98 parties to the Protocol and protection for your mark can be sought in any of these countries through the Protocol.

It entered into force in India on July 8, 2013. In order to register your mark internationally, it needs to be entered into the register of the International Bureau of the World Intellectual Property Organization. India has incorporated provisions of the Protocol within its domestic legislation i.e. The Trade Marks Act, 1999. Chapter IV-A of the act contains these provisions. A brief summary of the provisions related to international trademark registration is given below:

Pre-requisite for international trademark application

  • Your mark, which you want to register internationally, must either be already registered in India (called ‘basic registration’) or you must have an active application, for the registration of the said mark, pending with the Trademark Registry of India (called ‘basic application’). 
  • The applicant must be able to meet one of the following three criteria –
    • The applicant should be a national of India, or
    • The applicant should be domiciled in India, or
    • The applicant should have a real and effective business or commercial establishment in India

The Filing Process

  • Once you have the basic registration or basic application, you can apply for the International Registration with the Indian Trademark Registry. The international registration is based on the basic registration or application, as the case may be. Just like the Indian Registry has different forms marked TM 1, TM 2, etc., the International Bureau also has forms marked MM 1-MM 21. The applicant needs to file form MM 2(E) for application of International Registration.
  • In the form, you will have to specify all the jurisdictions you want to seek protection in. If the applicant wants to extend the protection of its mark to more jurisdictions after the trademark has been registered, it can be done under Article 3ter (2) of the Protocol.
  • The Indian Registry checks if the all the requirements regarding the application have been fulfilled. For example, they will compare the particulars of the international application with the basic application (or basic registration, as the case may be) filed with the registry and ensure that all the particulars like applicant name, address, nature of the trademark, the class of goods are same.
  • The entire filing process is to be done online, on the Indian Trademark Registry’s website. Even the notices of irregularities in the application are notified to the applicant online and must be responded to online.

Fees

  • Indian Registry charges Rs. 2000 as their handling fees. But the application fee needs to be paid directly to the International Bureau in Swiss Francs (CHF). The amount to be paid is notified to the applicant once the Indian office has forwarded the application to the International Bureau.

Publication in the Gazette

  • The international trademark registration process is very similar to that followed in India. Once an application is received by the International Bureau, and there are no irregularities in the application, the mark is published in International Bureaus’ periodic gazette. All the contracting parties are notified about the same and a fixed number of free copies of the gazette are also sent to the concerned offices of all the contracting parties.
  • The contracting parties, with respect to whom the protection of the mark is sought by the applicant, generally have twelve months to oppose the mark. But the Protocol provides for extension of this twelve month period to eighteen months period if the contracting party has made a declaration to that effect.

Registration

  • If the concerned contracting parties do not oppose the mark in stipulated time period (12 months or 18 months as the case may be) then the mark is considered as registered. If there has been an opposition and the applicant has replied to it and the contracting party is satisfied with the reply then also the mark is registered.
  • The effect of an international registration of the mark is same as if the mark had been registered in the office of the contracting party and it acquires all the rights and benefits which a national registration has.

Term of protection and Renewal

  • The period for which international protection subsists is same as it is in India, i.e. ten years from the date of international registration which may be further extended for a period of ten years by filing an application for renewal (in form MM 11) and paying the prescribed fees.

Ceasing of the international registration

  • According to the Madrid Protocol, if the basic application or the basic registration ceases to exist for any reason, be it refused, removed, abandoned, withdrawn or has been cancelled for any reason, before the end of five years from the date of international registration of the mark then the international registration also ceases to have effect.

  • So for example, applicant Z has a registered mark in India. Using this mark’s domestic registration as the basic registration, Z applies for international registration. After completing the due the mark is registered with the International Bureau on 5th 2013. On 10 July 2016, the Indian registration (basic registration) stands abandoned due to non-renewal. The Indian Trademark Registry notify the International Bureau the change in the status of the registration.Since the period of five years from the date of international registration has not expired till 10th 2016 the international registration shall also cease to have and the Z can no longer have any protection for his mark in any jurisdiction

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  • But if the period of five years has passed since the international registration then the international registration becomes independent of the basic registration (or basic application)

The Controller General of Patent, Designs and Trademark (CGPDTM), India, has published the guidelines related to the Madrid Protocol which further clarify the International Trademark registration process.

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