TAXAJ

International Trademark Registration

India’s mobile phone manufacturer, Micromax recently received the 1.25 millionth international trademark registration for its trademark – ‘MICROMAX’, giving it protection in over 110 countries. The international trademark registration for Micromax was filed under the Madrid Protocol, under which a mark can be protected in many jurisdictions by filing an application for international registration. In this article, we look at the Madrid Protocol in depth and also the process for international trademark registration.

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About This Plan

File your International Trademark registration application online through us to get maximum benefits. Get help with Trademark registration procedure, eligibility and documents required.

Created by potrace 1.15, written by Peter Selinger 2001-2017

Timeline

It usually takes few months.

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Services Covered
Who Should Buy
How It's Done
Documents Required
Services Covered

  • Session with TAXAJ Expert
  • Filing of Application for Registration
  • Follow up till you secure Trademark Certificate
Who Should Buy
  • Any Individual or Business willing to register their brand name internationally.
How It's Done

    • Requirement
  1. A business in a Contracting Party
  2. Be domiciled in a Contracting Party
  3. Be a national of a Contracting Party
Documents Required
    • Identity proof of the trademark owner 
    • Aadhar Card
    • Certificate of Incorporation ( In case of a Private Limited Company or an LLP) 
    • Udyog Aadhar Registration 
    • Logo if it is applicable and available 
    • Address proof

Brief Introduction

The Madrid Protocol which was introduced in the year 1996 with the aim to register a mark under multiple nations. The Madrid agreement tells about the system of international trademark registration. All you have to do is file an application for International Trademark Registration through the trademark office of the applicant.


International trademark registration application under the Madrid Protocol must be recorded by the trademark applicant through the trademark office, known as the workplace of origin. If there should be an occurrence of Indian Businesses, the Office of Registrar of Trademark, India is the workplace of origin. The office of origin will process the trademark application and record it with the Intellectual Property Organization at Geneva.


If your trademark application is found perfect as per the norms, then your mark, logo, or word is ready to be recorded in the International Register and can be published in the World Intellectual Property Organization (WIPO) Gazette of International Marks. The International Bureau gives a certificate of international registration and tells nation contracting to the Madrid Protocol that the trademark is registered. The Madrid Protocol has set severe time limit of 12 and half years for issues which shall be raised by the designated offices.

What is the System of the registration of International Trademark?

The system of the registration of international trademark comprises of three very essential parts. Hence, we have given below the three parts in precise:

  • Part I: Trademark Search

    It is pertinent to mention that how trademark search is important before making an application for the registration of international trademark. It is suggested to ensure that there is no similar trademark already registered. The applicant can search for that on the WIPO’s Global Brand Database and conform that there is no similar trademark registered in any of the target markets where the applicant is planning to present his application form. This search can be on the basis of the following three factors:

    1. The text used in the particular trademark

    2. The image used in that trademark

    3. The goods or Services class where it is to apply

  • Part II: File Application For Registration

    Once the trademark availability is verified then you can make an application for the registration of international trademark. The most significant prerequisite is that the trademark is either registered or applied for in the origin office (the home country). One can choose for the easy procedure of the international trademark registration and can apply through the Madrid System if they are native of the eligible country. The application shall be filed with the country of origin’s local trademark office and they shall forward to WIPO after duly verifying it. Then the further analysis is done by the WIPO office and the country’s institutions where it is applied for.

  • Part III: Management Of International Trademark

    Once the registration of the international trademark is successfully done then its appropriate management is very important. The management of Trademark is very centralized and simple under the Madrid System. The rules are very clear and are properly specified together with the appropriate forms for each feature. The management of Trademark involves following aspect:

    1. Renewal of the trademark for every 10 years

    2. The E-payment of the fees

    3. To expand the geographical scope by applying in more countries

    4. Appointment of new representatives

    5. Transfer of the Ownership

    6. Cancellation of the trademark

Registration Procedure of International Trademark Registration

  • Applying Through National Trademark Office (Office Of Origin)

    Make sure that you are registered before filing an international application, if not, then file an application in the Trademark and IP office of the country. This ground level filing of an application is called Basic Trademark Application. Once you are done with the proceeding of Basic Trademark Application, you can apply for International Trademark with the help of the same office, which will later forward it to WIPO.

  • Examination By WIPO

    WIPO (World Intellectual Property Organization) goes through your application. When approved, your international mark is recorded in the International Register and distributed in the WIPO Gazette of International Marks. At that point, WIPO will send you an authentication of your international registration and tell the IP Offices in all the domains where you have applied to have your mark secured.

    Do take note that the extent of assurance of a worldwide registration can't take place at this phase in the process. It is just decided after substantive assessment and choice by the IP/Trademark Offices in those domains.

  • Examination By National Offices

    The IP Offices of the regions will choose that where you need to ensure your mark, within the appropriate time limit (12 or 18months) after their enactment. WIPO will enlist the choices of the Trademark Offices in the International Register and notify you.

    If an IP Office won't secure your mark, either completely or partially, this choice doesn't influence the choices of different Offices. You can challenge a refusal choice straightforwardly before this Trademark Office concerned under its legislation. If an Office acknowledges ensuring your mark, it will give an announcement of award of assurance.

    This International Trademark is legitimate for 10-years. If you want, you can renew the registration at the end of 10 years.

Fees for international Trademark Registration

Under the Madrid System the fees that is applicable for processing the application for international trademark comprises of three elements:

  • Basic Application Fees

    this is basic for registering the mark.

  • Complementary Fees

    For every contracting party i.e. country, the application is prepared for the jurisdiction where the applicant desires to protect his mark. In few cases, the complementary fees are the only individual fees.

  • Supplementary Fees

    For each class of goods or service trademark this supplementary fees is charged. There may as well be certain handling charges that are imposed by the office of origin to verify and forward the application to WIPO. The handling charges in India are fixed at Rs. 2000.

Madrid Protocol

The Madrid Protocol which came into operation in 1996 and the Madrid Agreement which dates from 1891 govern the system of international trademark registration. Under the Madrid Protocol, a mark can be registered in multiple countries by filing an application for international trademark registration through the trademark office of the applicant (“office of origin”).

International Trademark Registration Process

International-Trademark-Registration-Process

International trademark registration application under the Madrid Protocol must be filed by the trademark applicant through the trademark office of the applicant, know as the office of origin. In case of Indian Businesses, the Office of Registrar of Trademark, India is the office of origin. The office of origin will process the trademark application and file it with the Intellectual Property Organization at Geneva.

If the trademark application is found fit, then the mark is recorded in the International Register and published in the World Intellectual Property Organization (WIPO) Gazette of International Marks. The International Bureau then provides a certificate of international registration and notifies each of the country contracting to the Madrid Protocol for which protection has been requested by the trademark applicant. Each of the countries trademark office has the right to refuse protection of the mark by notifying to the International Bureau within the time limits specified in the Madrid Protocol. The Madrid Protocol has set strict time limits  of 12 or 18 months for objections to be raised by the designated offices.

Any objection to registration of the trademark must be made to the International Bureau in the prescribed format. If there are no refusals by any of the country, then the protection of the mark in each of the country is the same as if it had been registered by the Office of that country.

Once an international trademark is registered under the Madrid Protocol, the mark is registered for 10 years. International trademark registrations can be renewed at the end of the 10 year period directly through WIPO or through the concerned office of origin.

Requirements for Obtaining International Trademark Registration

There are three main requirements for obtaining an international trademark registration in India:

  • The applicant should be a national of India or domiciled in India or have real and effective business or commercial establishment in India.
  • The applicant must have a national (Indian) trademark application or registration of a trademark with the Indian Trade Marks Registry. This national trademark application/registration will be used as the basis of the international application. The international application will have the same trademark as mentioned in the national trademark application or registration; The list of goods and services mentioned in the international application should also be identical with the national mark.
  • The applicant in the international application must choose one or more other member countries of the Madrid Protocol, where the applicant wants to protect his trademark.

Countries That Protect International Trademark Registrations

The following countries are parties to the Madrid Protocol. Hence, an International Trademark can be afforded protection in the following countries:

  1. African Intellectual Property Organization (OAPI)
  2. Albania
  3. Algeria
  4. Antigua and Barbuda
  5. Armenia
  6. Australia
  7. Austria
  8. Azerbaijan
  9. Bahrain
  10. Belarus
  11. Belgium
  12. Bhutan
  13. Bosnia and Herzegovina
  14. Botswana
  15. Bulgaria
  16. Cambodia
  17. China
  18. Colombia
  19. Croatia
  20. Cuba
  21. Cyprus
  22. Czech Republic
  23. Democratic People’s Republic of Korea
  24. Denmark
  25. Egypt
  26. Estonia
  27. European Union
  28. Finland
  29. France
  30. Georgia
  31. Germany
  32. Ghana
  33. Greece
  34. Hungary
  35. Iceland
  36. India
  37. Iran
  38. Ireland
  39. Israel
  40. Italy
  41. Japan
  42. Kazakhstan
  43. Kenya
  44. Kyrgyzstan
  45. Latvia
  46. Lesotho
  47. Liberia
  48. Liechtenstein
  49. Lithuania
  50. Luxembourg
  51. Mexico
  52. Monaco
  53. Mongolia
  54. Montenegro
  55. Morocco
  56. Mozambique
  57. Namibia
  58. Netherlands
  59. New Zealand
  60. Norway
  61. Oman
  62. Philippines
  63. Poland
  64. Portugal
  65. Republic of Korea
  66. Republic of Moldova
  67. Romania
  68. Russian Federation
  69. Rwanda
  70. San Marino
  71. Sao Tome and Principe
  72. Serbia
  73. Sierra Leone
  74. Singapore
  75. Slovakia
  76. Slovenia
  77. Spain
  78. Sudan
  79. Swaziland
  80. Sweden
  81. Switzerland
  82. Syrian Arab Republic
  83. Tajikistan
  84. The former Yugoslav Republic of Macedonia
  85. Tunisia
  86. Turkey
  87. Turkmenistan
  88. Ukraine
  89. United Kingdom
  90. United States of America
  91. Uzbekistan
  92. VietNam
  93. Zambia
  94. Zimbabwe

Benefits of International Trademark Registration

  • Legal Protection

    International Trademark registration legally protects any infringement of the particular trademark by third person. It is easy to prove the legal right in the court if the trademark is registered. Hence, before going through the legal process to fight against an infringement, it is important to ensure that the trademark i.e. the word, slogan or logo is registered.

  • Business Opportunity

    Trademark works as an intangible asset and plays a crucial role in the growth of your brand. A successful trademark provides your business an opportunity to earn money and fame. Businesses like Nike or McDonald’s has earned royalties via licensing agreement.

  • Unique Identity

    Globally your product gets recognition via international trademark registration. Registration is the initial step towards ensuring this.

  • Beneficial For Online Operators

    International Trademark Registration plays a crucial in the growth of e-commerce business. If you are involved in selling products online then somehow it paves the way for your product to be available to international consumers.

    Once you have got recognition in the international market it becomes feasible for your trademark to gain popularity among masses. It is wise to obtain the International Trademark Registration as fast as possible so as to avoid any kind of confusion amongst the buyers.

    Changes And Renewal

    Once you have International Trademark Registration it becomes valid for 10-years from the date of registration. Though, it is easy to access changes and renewal facility. For the renewal purpose all you have to do is file the same application form which you have submitted to WIPO.

  • Protects Your Brand During Export/Import

    International Trademark registration safeguards your brand from counterfeits. In case of any infringement conducted during import or export you have the right to take legal action against such infringement.

Timeline

Processing time in every nation varies, yet none takes longer than year and a half. In the event that the trademark doesn't get dismissed within this period, it is viewed as registered in that concerned nation.


Your application will get prepared in every domain you have picked. The authorities will educate you if the trademark has either been regarded legitimate or the registration has been rejected in their nation. A letter of refusal will contain data about the progressions required in the application or different purposes behind the refusal. What's more, a time period limit must be followed to finish the changes. Various nations would have various practices about what is satisfactory in the determination of goods and services.