Registering a trademark internationally is necessary because a national trademark registration is limited to territories, and to operate internationally the operator should know how to register a trademark on an international level. An owner can enjoy Trademark rights outside the boundaries only with international trademark and it’s the best way to take your brand image to the next level.
The Madrid System which was introduced in the year 1996 is the protector of international trademarks, under this system you can protect your brand with the help of the Madrid Agreement and the Madrid Protocol. If you want to know how to register a trademark internationally, all you need to do is file an international Trademark application. About the international trademarks registration, the Madrid agreement will help you in understanding this system.
Under the Madrid System, you can protect your IP (intellectual property) in many different countries. By following this system, you can enjoy Trademark rights in 122 countries. These nations are actively working to protect each other’s trademarks. All these 122 countries have formed a union that is popularly known as Madrid Union.
The Madrid System protects many different trademarks like Logos, Images, Patterns, Names, Shapes, Colours, Packaging, sounds and smells. International Trademark protects all these concepts, as long as these concepts create distinctive signs which will help them to differentiate from others and can provide brand identification.
International Trademark Requirements
As in case of national filing, same requirement procedure is for an international trademark. To receive international brand protection, you need to start from the National Trademark Office of a Contracting State in order to reach the Madrid System. To file for an international protection, you need to be
- A permanent citizen of a state that has a contract with the Madrid System or we can say a citizen of that country which is a part of Madrid Union.
- The applicant should be a legal entity resident in a Contracting State.
- The applicant should have a commercial establishment or a real business in a Contracting State.
- The applicant should have national trademark registration, as it becomes the base for the international application.
- International application can be only filed for the trademark that already has national trademark registration.
- Same class of goods and services should be in international applications that are in national trademark registration or application.
- An applicant should choose Madrid member countries in the application where the applicant wants protection.
IP protection (Scope and duration)
For a period of 10 years you will get an international trademark that will provide you brand protection. After 10 years you can renew the term of your international trademark. For this you can file for a ™ renewal. You can not get an automatic reminder regarding the elapsed period because the majority of nation trademark offices do not send any reminder. No one will be happy in starting a renewal trademark procedure because these things need patience and time, so one should always deal and manage such things carefully. One can also hire a great and trustworthy lawyer who can look after your IP protection.
It’s up to the applicant which country to choose or how many to choose depending entirely on the applicant’s filing and on the applicant’s investing procedure. If the applicant forgets to mention some countries, there is no need to worry the applicant can add more countries later through a Territorial Expansion Application. An applicant can increase protection according to the brand conditions over the time. Territorial Expansion Application has a fee procedure for country addition, this fee can also vary so one can check out WIPO’s Fee Calculator for fee structure system.
- The first step of this process is to apply to the appropriate National Trademark Office. In this step one needs to choose the right National Trademark Office, you can clear this step easily through Google search.
- Fill form MM2 in the national office and this application will be examined by the national office. If your application filing has no defects, then your application will be passed to the WIPO, they will examine your application at an international level, this further examination step will take nearly 2 months.
- The next step of this process starts when the WIPO starts examining this application filing. This examination process is done to make sure that application has no defects and the application is from a legitimate applicant. Once everything is examined and cleared the WIPO’s International Trademark Gazette will publish it. After the approval and publishing process will be done, then the application will be forwarded and every country’s national offices will receive it where it was requested.
- This is the last step of trademark examination. Each requested country’s national trademark office will examine the application. They will examine the faults and will check out the same or already registered trademark in that country.
- This application is published in national gazette or bulletin, in order to allow the public and other trademark holders to question or raise voice in case of any similar mark or any other conflict. If there is any conflict then the national office has one year to post a provisional refusal notification for a time period of 18 months, later the time period can be extended.
If there is no response on provisional refusal notification, then the applicant is granted a trademark in that country and the country will officially protect the trademarked brand. International Trademark registration has many different types of benefits like protection, Business opportunity, Unique identity, online operation, Import or Export protection, and much more.
- Protection: The best thing about International trademark registration is that it legally protects a brand and also grants protection from any kind of international infringement. It protects the trademark from getting used by any third party or person without the owner’s permission. It provides protection to the Trademark in the registered foreign country. It also helps in proving the legal rights in the court at the time of registration.
- Business opportunity: International Trademark registration helps in business growth and opportunity. Trademark helps in the growth of a brand because of its intangible nature. A business can grow and can achieve profit or revenue just because of a successful trademark, hence a successful trademark acts as a best business opportunity for a brand. Trademarks can also be licensed and owners use it in order to earn money, so an international trademark registration can help trademark owners to licence the trademark to foreigners for the success of the brand. Many successful businesses have earned royalty through licensing.
- Unique identity: International trademark registration helps in providing unique identity or global recognition for the brand. It helps in providing exclusive rights to the owner and also protects the products in case of any fraud or duplication.
- Online operation: International trademark registration is very important for e-commerce business, it plays an important role in online business operations. It helps a product in getting international recognition, once the brand starts operating online, International trademark registration paves a way in getting global recognition and international availability of the product. Once the global market starts recognising the product, it becomes easy to form a vast international customer base for the trademark. So International trademark registration has a significant role in avoiding confusion regarding the products.
- Import or Export protection: A trademarked product is protected by the international trademark registration from getting misused on an international level by foreign parties. Once the trademark starts getting recognised the chances of its illegal usage rises in order to gain more and more customers under the Trademark. The international trademark registration helps in taking legal action against such infringement during import and export. It protects the trademarked brand products in foreign lands from getting copied or used illegally.
This guide will help the interested candidates who want to register a trademark internationally. You will know about the requirements for international trademark registration and also its scope and duration. We have also cleared the levels of the international trademark apply procedure and the different benefits of registration. The process takes some time so the applicant needs to be patient and in case of complications, you can hire a professional who can help you through this whole journey.
1)Which system is the protector of international trademarks?
The Madrid System which was introduced in the year 1996 is the protector of international trademarks.
2)Under the Madrid System, in how many countries can one enjoy an international trademark?
Under the Madrid System, one can enjoy Trademark rights in 122 countries. All these 122 countries have formed a union that is popularly known as Madrid Union.
3)What are the basic requirements for the International trademark registration?
The basic requirements for the International trademark registration is that the applicants should be permanent citizens, should have a legal residents entity and should have a commercial establishment or a real business in a Contracting State.
4)What is the application procedure for the international trademark registration?
The international trademark registration starts with trademark search, after this step the applicant should file a registration application, then this application is examined by the WIPO, and a trademark registration notification will be issued by the WIPO. After this the opposition process of trademark registration will happen the applicant will be granted International Trademark Registration.
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