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International Trademark Filing
Filing a trademark application is the first step towards registration of a trademark in India, Our pool of IP Attorney’s are very experienced with over 18+ years of experience in trademark filing, and prosecution matters in India and worldwide.
Table Of Content
Overview
Madrid System
Step Wise ProcessInternational Trademark Filing
The law of trademark passed by the Indian government is applicable and have force only within the Territory of India, thus, the trademark registered in India shall have effect only within India, in order to obtain protection of trademark in other foreign countries the same need to be registered under law of that country. Every country has its own trademark law prescribing regulations for registration of trademark in that country. In other words, if a person wishes to obtain trademark registration in any particular country then a separate application has to be moved in all such foreign countries. In the year, 2013 Indian government acceded to the Madrid convention which prescribes a methodology of filing international application to the contracting parties from India through the office of the Registrar of Trademark.
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Email us: info@setindiabiz.com
Two methods by which an International Application can be filed
International application in each foreign country: To seek protection in any country directly, an International application must be filed directly to the Trademark office of the foreign country by following the laws and regulations of that country. For this purpose the applicant must hire local law firm which is practicing in trademark in that foreign country. In practice the applications to countries which is not party to the Madrid system can be filed as per above. We provide our services in engaging an Attorney in the foreign countries work closely for registration of trademark in the foreign country.
International application under Madrid system: The trademark registration can be initiated by filing an International application under Madrid protocol before the Registrar of Trademark for specific countries. The Indian Trademark office collects International Trademark application and after finding it in conformity with the Madrid protocol transmits such an International application to the WIPO, which further transmit it to the concern foreign countries. Each International application is processed by the foreign country as per their law and all communications are routed through Indian Government.
Basic understanding for International TM Registration under Madrid system
Under the Madrid protocol a mark can be protected in many jurisdiction by filing an application for International registration. Such application is presented to the International Bureau of the World Intellectual Property Organization (WIPO) at Geneva through the office of origin for example if applicant is from India then office of origin shall mean to be the Registrar of Trademark in India. The Madrid system of filing trademark provides one single procedure for registration of trademark in several territories. The immediate advantages of Madrid system are as under
| International TM Registration under Madrid system |
|---|
| Only one International application is required to be filed to register a trademark in one or many foreign territories, provided there are parties to the Madrid convention. (There are 98 countries who have signed and ratified the Madrid convention) |
| The application can be filed in any one language out of English, French or Spanish irrespective of the language of contracting party. The Government filing fees for each foreign country shall be paid in India and in one currency only i.e. Swiss Franc (CHF). All the applications filed under Madrid convention shall be allotted only one registration number valid in all territories and it shall also have only one renewal date. The registration obtained under Madrid system can be further extended geographically and any changes may also be recorded through one single procedure affecting registration across foreign territories. |
| The International application under Madrid protocol may be filed based on either a mark that has already got registered in India or which has been applied for registration. It means to file an International application first a local registration of trademark be obtained or applied for. The International application can be filed only in respect of goods or services for which the local registration in respect to a trademark has been obtained or applied. |
| The International application can be filed for the countries or group of countries which are parties to the Madrid protocol and have further ratified the same. A list of 98 countries, who are parties to the Madrid convention can be obtained from us. However, it may be interestingly, noted that countries like Nepal Pakistan, Bangladesh, Sri Lanka, Myanmar,Malaysia, Hong Kong, Indonesia, Iraq, Kuwait, Mauritius, Saudi Arab, Taiwan, Thailand, Canada etc. are not part of Madrid protocol, it means if a person from India want to get registration of trademark in above mentioned countries then separate application has to be moved with the help of local Attorneys. |
Procedure for Filing International TM Application
| International application in each foreign country |
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| To file an International application under Madrid protocol through India the applicant must be an Indian national or domiciled in India or the applicant have a real or effective business or commercial established in India. The applicant must have filed a Trademark application in India or is a registered owner of the trademark for which International registration is sought. Kindly note that the International application can be filed for the same trademark as mentioned in national trademark application or registration, at the same time the description of goods or services mentioned in trademark application need to be identical or no wider than the basic national mark. |
| International application under Madrid system |
|---|
| The International application may be filed with the help of an Attorney, for that the Attorney must be duly authorized on Form TM-48 by the applicant. As TM-48 is in the nature of Power of Attorney hence the applicable Stamp duty must be paid based on the state specific stamp duty Act under whose jurisdiction it is executed. The International application is to be submitted in the prescribed Form MM-2(E) however, if it is the case of USA then another application in Form MM-18 (E) need to be filed and in case the foreign country is a part of European Union then the applicant must indicate a second language in the application out of French, German, Italian and Spanish. |
| Upon receiving an International application, the Registrar shall verify that it is in conformity with the provisions of Madrid protocol and will transmit such application to WIPO. After verification, the WIPO transfer it to the concerned foreign Govt. The application is processed by the foreign Govt. as per their law and all communication is routed through the Indian Govt. The International registration is dependent upon the validity of local registration for a period of 5 years, in other words if the local registration ceases to have effect or the application of TM is refused or withdrawn or treated as abandoned within 5 years then the International registration will be no longer protected. |
| The WIPO scrutinizes International applications received from offices of origin. If any irregularity is found, the International Bureau notifies such irregularities to the office of origin concerned as well as to the applicant/applicant’s authorized representative. The irregularities are ordinarily rectified through the office of origin within the period of three months from the date of notification. When the international registration is accepted for protection in respect of all or some of goods/services, the particulars of the international registration shall be published in a separate part of the Trademarks Journal and if no objection is received the Trademark gets registered. |
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