Trademark registration for foreigners

Trademark registration for foreigners in India under Madrid Protocol enables the owner to have rights even outside the country. Conduct the trademark searches by India Trademark registry and get the common law searches.

The Madrid Protocol Agreement governs the international trademark registration under which a mark can be registered internationally in multiple countries.

Certain countries have been declared as convention countries by India and accorded similar privileges as those granted to the citizens of India. A person or company from a convention country can apply for trademark registration in India within 6 months of making an application in the home country.

  • If accepted, such a foreign national will be deemed to have registered his or her trademark in India from the same date on which he or she made application in the home country.
  • In case applications have been made for registration of a trademark in more than one country, a period of 6 months would be months would be reckoned from the date on which the earlier or earliest of those applications was made.

What is the eligibility criteria for international trademark registration?

The following are the main requirements for obtaining the international trademark in India:

  • The applicant should be an Indian national or domiciled in India.
  • The applicant must have a real business in India.
  • The applicant must have a trademark application/trademark registration of your home country. It will be used as the basic mark for the international application.
  • The applicant must choose one or more countries which are member countries of the Madrid protocol agreement.

What is the procedure for filing an international trademark application?

International Trademark Registration process under the Madrid Protocol:

Basic Mark

The trademark application/ registration of home country known as a basic mark which is submitted with the international trademark application.

Certify the Mark

An international trademark application needs to be filed through the office of origin (the trademark office of the applicant) along with the basic mark application/ registration. The application forward to WIPO after certifying the international application.

Examination by WIPO

The WIPO formally examine the international application, if approved, the mark will record in the international register and publish in the WIPO Gazette. After which issue, a certificate of registration and notify the contracting IP offices.

Substantive Examination

The trademark offices in which you want to protect the mark will conduct a further substantive examination under domestic law. Within 12 or 18 months either grant or refuse the mark protection. The decision of the country will not affect the decision of other designated countries.

What are the factors need to be kept in mind for protecting the trademarks?

Trademark Registrations is one of the most critical safeguards businesses should avail in India. Till date, many foreign and domestic applicants have successfully registered their marks in India and Indian courts have upheld and granted favourable decisions to the rights holders. Additionally, businesses should implement additional strategies for protecting their trademarks, some of which are mentioned below:

  • Get trademark searches conducted in the Indian Trade Marks Registry in the classes that are of interest to you including the ancillary classes.
  • Get common law searches (this includes the internet, market surveys, yellow pages and directories) conducted to ascertain whether third parties are using your trademarks and if so, the extent of such use.
  • Based on this information and after seeking the local counsel’s opinion decide if the trademark is available for use or not.
  • Should the trademark be available for use, immediately apply for the registration?
  • The rights holder should also consider hiring a watching service to monitor the trademark journals in order to alert them to any published, deceptively similar trademarks or descriptive trademarks that might be of concern.
  • Should the rights holder own a trademark that has been used and has acquired goodwill and reputation, it is advisable that along with filing of the trademark application in India, they should also make press releases, publish cautionary notices and advertise the mark to ensure that the relevant section of the public is aware that they are entering the Indian market and are protecting their trademark from any third party violation.
  • The rights holder should also take immediate steps to register their domain names including country-coded top-level domain names in India, as there have been many instances of third parties registering domains for certain well-known marks with the intention of extracting money by selling these domain names to the rights holders.
  • Should the rights holder discover that their trademark is being infringed, they should take immediate steps to protect their trademark, either by means of filing oppositions, cancellations, conducting investigations, sending cease and desist notices or initiating appropriate civil and criminal actions.

What are the benefits of filing the international trademark application under the Madrid Protocol?

  • Madrid Protocol is a one-stop solution to obtain trademark protection in multiple markets.
  • Outweigh the costs of the international registration as compared to individual foreign filings
  • Subsequent changes like renewals, change of name or address or ownership are cost-effective with a single procedure and fee payment.

Potentially significant savings as an international registration through Madrid Protocol is time effective as well.

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