How to search International Trademark Registration

How to search International and Global Trademark Online

Trademark means a brand or logo consisting of symbols, letters, words, numbers or phrases associated with the goods or services of a company or person. A trademark is a business identification of a company or individual that helps consumers to distinguish the trademarked goods or services from others. Thus, trademark registration is essential to secure its unauthorized misuse by others.

However, trademark registration is limited to resolution. So, when there is a Trademark which is registered in India, the registration brings protection only within India. A Trademark owner is required to get his protection for International Music Security outside India. When the Trademark owner has an international registration, they can apply the mark outside of India and assure that any third parties do not apply for the similar trademark in the global market.

What is Madrid protocol?

Madrid Protocol governs International Trademark Search and registration. The Madrid Convention which is linked to the International Registration of Trademarks was adopted on 14 April 1891, and the Madrid Protocol linked to the Madrid Agreement was adopted in Madrid on 27 June 1989.

The Trademarks Act, 1999 was amended to quit the Madrid system after India became a representative of the Madrid Protocol. On 21 September 2010, the Trade Marks (Amendment) Act, 2010 was approved and, under the Madrid Protocol international trademark registration was announced in India.

While covering the total of 128 countries, This Madrid Union has 112 members. A trademark owner in International Trademark Search and registration under the Madrid Protocol by filing a single application with the national trademark office or the original office.

Where the business is registered in India, the Office of the Registrar of Trademarks is the parent office for filing Global al trademark applications under the Madrid Protocol. The parent office will process the trademark registration online application and record it with the Intellectual Property Organization in Geneva.

For example: India’s Micromax phone maker has freshly collected the 1.25 millionth International Trademark registration for its trademark ‘Micromax’. Thus, the trademark ‘Micromax’ is now protected in more than 110 countries. International trademark registration was filed for the ‘Micromax’ trademark under the Madrid Protocol for obtaining international registration.

Pre-requisites for International Trademark Registration

The following requirements must have met before applying for any international trademark registration, and trademark applicant must assure these:

  • The applicant must be a resident of India, Must be an Indian citizen or have an effective and genuine business or commercial establishment in India.
  • The applicant must have the trademark registered with the Indian Trademark Registry or apply for a national trademark application in India. The national trademark application/registration serves as the basis for the international application.
  • The applicant should apply for the international application for the same trademark for which national trademark registration has been obtained or is mentioned in the national trademark application.
  • The list of services and goods in an international application should be the same as in a national trademark registration or application.
  • The applicant has to choose one or more Madrid Protocol member countries where it seeks protection in the international application.

Under the Madrid Protocol, International Trademark Registration Process

The procedure for international trademark registration under the Madrid Protocol is as follows:

  • International and Global Trademark search

Before applying for International Trademark Registration the applicant must first conduct a Global Trademark Search. The applicant may perform a Global Trademark search on WIPO’s Global Brand Database to determine whether an identical or similar registered trademark exists. The applicant must assure that no  similar or identical registered trademark exists in any of the Madrid Protocol countries where he aims to apply for trademark registration. If any identical or similar trademark exists, then that application will be rejected.

  • File Registration application

After the International Trademark Search, the applicant has to file an International Trademark Registration application in Form MM2(E). The applicant must file the international trademark registration application at the office of the Registrar of Trademarks in India, as this is the principal office for Indian businesses. The Trademarks Registrar will start processing and verifying the application. After verification, the Registrar will file Trademarks with the World Intellectual Property Organization (WIPO) in Geneva. The Application is filed with The applicant in the international trademark application electronically through the official IP India website and pays the handling fee.

  • Scrutiny of Application by WIPO

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

  • Notification of Trademark Registration by WIPO

WIPO will issue a notification relating to the international trademark application for each of the Madrid Protocol member countries where the applicant aims to achieve registration. The member countries will examine the international registration application in accordance with the trademark rules and regulations. Member countries shall submit their examination reports and inform WIPO of the acceptance or rejection of the application within 12 to 18 months of receipt of the trademark registration application.

  • Opposition to Trademark Registration

If member countries have any objection to the trademark registration application, it should be submitted to WIPO in the prescribed manner. Opposition proceedings on a trademark application shall be conducted directly between the trademark applicant and the respective member country of the Madrid Protocol. Oppositional processes include response, appeal, hearing and prosecution. WIPO will be involved in the entire opposition process.

  • Grant of International Trademark Registration

Once the member countries accept the application, the trademark will be registered under the Madrid Protocol for ten years in the respective chosen member countries. Upon acceptance of the registration application, a Statement of Grant will be issued to the applicant, certifying the International Trademark Registration of the Indian trademark.

Also Read

How to Register Trademark for Partnership Firm

Benefits of International Trademark Registration

Legal protection

International trademark registration legally protects a trademark from international infringement of that trademark. A registered trademark gets protection against any third person who uses it without the authorized permission in the foreign country where it is registered. Once a trademark is registered, it becomes easier to prove legal rights over it before the court.

Business opportunity

Trademark is an intangible asset of a business and plays a vital role in the development of the brand. A successful trademark provides an opportunity for the business to earn money. If registered internationally, the trademark owner can also license the trademark to a foreign entity. Thus, international trademark registration set ups the profit of the brand or product. Businesses such as Nike or McDonald’s have earned royalties through licensing agreements due to obtaining international trademark registrations.

Unique Identification

After conducting the International Trademark Search and then filing the registration provides global recognition to a product. International trademark registration helps fight against infringement, ensuring that trademark owners get exclusive rights to one of their most valuable assets.

Beneficial for online operators

In the development of e-commerce business, International trademark registration plays a crucial role. When a business is involved in selling products online, it paves the way for making the product available to international consumers on a global scale. Once the product is recognized in the global market, it becomes easy for the trademark to gain popularity among the vast consumer base. It is better to take International Trademark Registration for such products to avert distraction with the buyers in relation to the product.

Protects the brand during export or import

International trademark registration secures and protects the trademarked product from getting misused by any trademark in foreign countries by foreign parties. As soon as the trademark is recognized abroad, It is better to obtain International Trademark Registration for such products to avoid confusion among the buyers regarding the product. Protecting the brand during export or import, International trademark registration gives the right to take legal action against such infringement and to protect the trademark associated with a product or service.

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