International Trademark Registration in India

Overview

International Trademark Registration is the process of protecting a trademark in countries outside India, most commonly through the Madrid Protocol, an international treaty administered by the World Intellectual Property Organization (WIPO). It allows a trademark owner to file a single application, in one language, with one set of fees, to seek protection in multiple member countries at once, instead of filing separate applications with each country's trademark office.

An international trademark application is filed based on an existing trademark application or registration in India, known as the "basic mark". Once filed, the application is examined by WIPO for formalities and then forwarded to each designated country, where it is examined under that country's local trademark laws. Each designated country may accept, object to, or refuse protection independently.

If you're an entrepreneur or a business planning to expand into overseas markets, protecting your brand internationally at the right stage can save you from costly disputes and brand infringement later. This Article will help you understand the international trademark registration process from India and prepare you to take the right steps forward. Therefore, you should only look for nothing but the best trademark attorneys. Fortunately, Legaltax can provide you with legal aid that has tenacity, talent and willpower to get your trademark protected worldwide.

What Are the Modes of Filing an International Trademark Application?

• Filing through the Madrid Protocol, where a single international application is filed with WIPO through the Indian Trademark Registry as the Office of Origin, designating one or more member countries.
• Filing a direct national application with the trademark office of each individual country where protection is sought, in cases where the country is not a member of the Madrid Protocol.
• Filing a regional application, such as with the European Union Intellectual Property Office (EUIPO), to obtain protection across an entire group of member countries in one go:
  1. The applicant must have a basic trademark application or registration in India before filing internationally.
  2. The trademark applied for internationally must be identical to the basic mark filed in India.

Eligibility Criteria For International Trademark Registration?

In order to be eligible for international trademark registration through the Madrid Protocol, you must already have a pending trademark application or a registered trademark in India, which will serve as the "basic mark" for the international application.

List of Key Regions Covered Under International Trademark Filing

The Madrid Protocol currently covers over 130 member countries across the world. Some of the key regions and offices where Indian applicants commonly seek trademark protection include:

• United States: Protection through the United States Patent and Trademark Office (USPTO).
• European Union: Protection across all EU member states through the European Union Intellectual Property Office (EUIPO).
• United Kingdom: Protection through the UK Intellectual Property Office (UKIPO).
• Middle East & Asia: Countries such as the UAE, China, Japan, and Singapore, each with their own designated national offices.
• Rest of the World: Other Madrid Protocol member countries across Africa, Oceania, and the Americas can be designated within the same international application.

What Are the Documents Required for International Trademark Registration?

To be able to file your international trademark application through the Madrid Protocol, you need to submit certain documents and details to the Indian Trademark Registry and WIPO. You can prepare the following documents in advance:

• Power of Attorney: Once you've chosen a Trademark Agent/Attorney to file and prosecute the application on your behalf, you'll have to draft the Power of Attorney to make it official.
• Copy of the basic trademark application/registration certificate in India
• Applicant's details, including name, address, and nationality
• List of goods/services along with the applicable class(es)
• Representation of the trademark (word mark/logo/label)
• List of designated countries where protection is sought
• Priority document, if claiming priority from an earlier filing
• Certificate of incorporation/proof of business, if applicant is a company
• Any other document required by the specific designated country's office

International Trademark Registration Process from India

• Filing the Basic Mark: Before applying internationally, the applicant must have a pending or registered trademark application in India, which becomes the basic mark for the international filing.
• Filing the International Application: The applicant or their Trademark Attorney/agent must file Form MM2 through the Indian Trademark Registry, which acts as the Office of Origin and certifies the application before forwarding it to WIPO.
• Examination by WIPO: WIPO examines the application for formalities such as classification of goods/services and completeness of information, and once satisfied, records it in the International Register and publishes it in the WIPO Gazette.
• Examination by Designated Countries: Each designated country then examines the application as per its own local trademark law and may accept it, raise a provisional refusal, or grant protection outright.

What is the Process of Responding to a Provisional Refusal?

If a designated country's trademark office raises a provisional refusal or objection, the applicant must respond within the timeline prescribed by that country, generally by engaging a local trademark agent or attorney in that jurisdiction. If no response is filed within the given time, or if the objection is not satisfactorily addressed, the trademark may be refused protection in that particular country while remaining valid in the other designated countries.

What Are the Requirements of an International Trademark?

An ideal trademark, whether filed in India or internationally, should be attractive in appearance and sound and represent the nature of the product. Most importantly, a strong trademark should be distinctive enough to be recognised across multiple jurisdictions and be ready to be registered and protected globally. The following are a few qualities of a good trademark that should be considered before filing internationally:

• A trademark must be a mark that comprises a device, brand, label, heading, ticket, word, letter, signature, name, packaging, numeral, or combination of colours or any sequence of the above attributes.
• It should be simple to pronounce and spell across different languages, since it will be examined by multiple international trademark offices.
• Further, it should be easy to identify and remember for consumers in different countries.
• It should not be too long and should preferably be difficult to forget easily, as lengthy or complex marks are harder to register and enforce internationally.
• It must be unique. It can be natural distinctiveness or obtained distinctiveness.
• The best international trademarks are coined terms, invented words, or distinctive geometrical patterns and designs that don't carry unintended meanings in other languages.
• It can only be indicative of the nature of the products, but not descriptive, since descriptive marks face objections in most jurisdictions.
• A good trademark should not be excluded under the prohibited categories of trademarks in India or the designated countries.

What Are the Benefits of International Trademark Registration?

1. Global Legal Protection: If a trademark is registered internationally, the owner can take legal action against infringement in each designated country and maintain their brand's presence in the global market.
2. Single Application, Multiple Countries: Filing through the Madrid Protocol lets you seek protection in multiple countries through one application, one language, and one set of fees, instead of filing separately in each country.
3. Cost & Time Effective: Managing renewals, changes, and assignments across multiple countries becomes simpler and more cost-effective through a centralised international registration.
4. Builds Global Brand Trust: International customers and partners feel more secure dealing with a brand that has protected trademark rights in their country.

Why Choose Legaltax?

LEGALTAX is India's largest professional platform of lawyers, chartered accountants, and company secretaries — with years of experience behind. We execute legal work for over 500 companies and LLPs every month, by leveraging our tech capabilities, and the expertise of our team of legal professionals.

1. Customer Score: We make your interaction with the government as smooth as possible by doing all the paperwork for you. We will also give you absolute clarity on the process to set realistic expectations.
2. 100-Strong Team: With a team of over 300 experienced business advisors and legal professionals, you are just a phone call away from the best in legal services.
3. Access To Experts: We provide access to reliable professionals and coordinate with them to fulfil all your legal requirements. You can also track the progress on our online platform, at all times.
4. Realistic Expectations: By handling all the paperwork, we ensure a seamless interactive process with the government. We provide clarity on the incorporation process to set realistic expectations.

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