1. What are the benefits of filing for an international trademark?
If you wish to promote your products or services outside your country, you must acquire the trademark rights there as well. A national trademark or a regional trademark system established by a group of nations (e.g., the European Union) is territorial and granted only to residents of that country or group of nations. One can, however, use another, more attractive, more cost-effective, more convenient, and more user-friendly route to acquire and manage their trademark rights abroad via the Madrid Protocol, an international treaty at which India joined in 2013.
2. Is it possible for foreigners to apply for trademarks in India?
Yes, foreigners can register their trademarks in India as well. A foreign applicant can file a trademark application with the foreign country’s trademark office under the Madrid Protocol. These offices are sometimes called offices of origin. Upon receiving the application, the Trademark Office forwards it to WIPO.
3. Madrid Protocol
There are currently 100 organizations and individuals who are Contracting Parties to the Madrid Protocol. These organizations and individuals cover 116 countries.
The World Intellectual Property Organization (WIPO) is a United Nations agency with headquarters in Geneva, Switzerland, which administers the treaty. It provides a user-friendly, expeditious, and cost-effective way to file trademark applications and manage trademark registrations in various countries. With Madrid Protocol, you can protect your brand worldwide.
The benefits of registering a trademark under the Madrid Protocol
Below are a few benefits:
- A very convenient and simple process.
- Recognized worldwide.
- Each trademark has an expected renewal date.
4. Does the Madrid Protocol allow foreigners to file trademark applications in India?
In order to be eligible for registration or filing, the trademark must be filed with the Indian Trademark Office. In the Indian Trademark Office, details in the primary application and international application will be matched.
WIPO (The World Intellectual Property Organization) Examination
WIPO will examine the application once it is received to ensure that it complies with the statutory requirements.
WIPO will submit the international trademark registration application if all steps are completed correctly. If it is accepted, it will be published in the WIPO International Register of Marks. In the case of international registrations, the WIPO will send the applicant the certificate.
A trademark’s validity is examined by the Trademark Office of the country concerned
During the further examination of the application with the Trademark Office of the specific Country, the application will be verified with the laws of the specific Country. They will inform WIPO within 12-18 months if the application has been accepted or rejected. In turn, WIPO is responsible for notifying the applicant of the decision of the relevant Foreigners Apply for Trademarks in India
Advertisement and Registration
In a few months, the Indian Trade Marks Office will evaluate the reply to the provisional refusal. There will be an advertisement in the Indian Trade Marks Journal for 4 months, during which third parties can object to the mark. If no opposition is filed after 4 months and the mark is not opposed, it would be granted protection by the Indian Trade Marks Registry. After registration, a brand would retain its protection for a period of 10 years. When WIPO does not receive any notification of temporary denial within 18 months, the mark would ordinarily be advertised and the procedure detailed above would apply.
WIPO is the only entity that can renew the Madrid application designating India. The WIPO will then notify the Indian Trademark Office. It is important to note that any changes made to the details of the applicant or owner, renewal of the registration, assignments, and so on can also be done by filing just one application at WIPO. This will be reflected throughout the designating countries.
5. REGISTRATION MANAGEMENT
In addition to offering the applicants many advantages to secure their trademark protection in a variety of markets, the Madrid System provides them even more benefits regarding managing their mark following registration.
It can take quite a while for a trademark to be registered in India. According to general practice, trademark registration is likely to be challenged by opponents. Due to the delays and backlogs in the Trademark Registry, it is highly likely that a mark will be opposed or objected to, which would be detrimental to individuals who make trademark applications in India as their origin country. Thus, the process could be stalled during and even after the five-year dependency period for entities or individuals using India as their origin country.
Despite its purpose of facilitating convenient, efficient, and hassle-free registration across several countries, the Madrid Protocol stresses the importance of Applicants in India considering the general practice and timeline of the Trademark Registry. However, the most important loss was the monetary loss incurred from the designation of several countries and engaging foreign counsel.