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Author - Associate Aliza Abdin

As we all know a trademark is a special symbol, sign or logo that-after registration is used for a particular brand name and identification. The simplest way to register a trademark is domestically in your own country. It is not compulsory to register a trademark internationally but in case your customers are from different countries, worldwide and the business is spread across a continent or the globe then it naturally becomes important to register the trademark internationally or other competitors may get a chance to exploit the company’s name.

International trademark is a vast system comprising of languages, laws and cultures, it isn’t easy to understand or explain it but just like any other system it comes with a set of rules and regulations. And a step by step guide to register a trademark. In order to eliminate the differences in trademark rights in various countries and to unify and recognize a set of rules in many countries there is a series of treaties signed by these countries to help the citizens of their country get their international trademark application and continue their business worldwide without any hindrance.  

Madrid Protocol

The Madrid Protocol is an international system used for registering trademarks internationally in countries that come under this system. There are approximately 90 countries that follow this Madrid system. It consists of two treaties that form the legal base of the Madrid system, they are:

a) Madrid Agreement Concerning the International Registration of Marks of 1891

b) Protocol Relating to the Madrid Agreement (1989).

Madrid system is used widely because it is the simplest way of registering a trademark in a bunch of nations at one time. It is easier because it saves time and work as the applicant does not have to register the trademark separately in different countries.

It also becomes easier for the administration team to regulate the registration of many countries through a single application. The introduction of Madrid system has made international registration user-friendly. The Madrid system is administered by the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland.

How to register an International Trademark?

An International Trademark registration application is filed under the Madrid Protocol, through the origin trademark office of the applicant.

For example, an Indian applicant applying for an Indian business has to fill the application at the Office of the Registrar of Trademark who then will start the procedure and file it at the Intellectual Property Organization at Geneva.

If the application is correct and approved then the mark is registered and recorded in the International Register and published in the World Intellectual Property Organization (WIPO) Gazette of International Marks, it gives a certificate to the applicant for the successful registration of the mark internationally and also notifies the countries in the Madrid protocol. If no country objects to the mark then it is registered under the Madrid Protocol for ten years. After the completion of ten years, it can be renewed through WIPO or the office of origin.

 Three key requirements for Indian citizens to register internationally

1.  The applicant must be a citizen of India or the business that he wants to register for must be established in India.

2.  The applicant must have an Indian Trademark registration before registering internationally. The same trademark for the same goods and services will be used internationally.

3. The applicant must choose the number of countries from the Madrid Protocol for registering his trademark.

Important points regarding international registration 

•  Apart from Madrid system there are two other systems that regulate international trademark registration, The Paris Convention of 1883 and the European Union Trademark. The former is the oldest and the largest with member strength of almost 177 countries. The World Intellectual Property Office (WIPO) remains the Portal for international applications.

• There isn’t any international system that covers all the countries worldwide. The Madrid system and the Paris Convention covers a lot of countries but there are still many countries that do not come under both. So it isn’t easy to acquire a true international mark.

• As mentioned before, to apply for an international trademark registration, the application cannot be submitted directly to WIPO but has to go through the origin office. There are certain rules for the application to be accepted, like the application must not be handwritten and the mark associated with particular goods and services must be identical to the registered national trademark.

• After the international trademark application has been accepted and registered in the selected countries, one can still add more countries to the list where he or she wants to register his trademark through subsequent designation.

•   Although the registration is easy and user-friendly yet it does not guarantee a lifetime of trademark benefits for the registered trademark. It lasts for a period of ten years from the date of registration; it can be further renewed for another ten years after the payment of renewal fee.