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INTERNATIONAL 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 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.

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 Trademark Filing Cost

Expense Head for Tm Filing

  • 1Professioanl Fee
  • 2Government Filing Fee for transmission to WIPO
  • 3GST @ 18% on Prof Fee
  • Total

For Individiul/Startup/small Enterprise

  • 1Professioanl Fee
    15000
  • 2Government Filing Fee
    5000
  • 3GST @ 18% on Prof Fee
    2,700
  • Total
    22,700/-

Basic understanding for International Trademark 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:

1.
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)
2
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.
3
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.
4
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 the International application

International application in each foreign country:

STEP 1: 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.

STEP 3: 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.

Recording Renewals and changes and corrections in the International Registration: The renewals of international registrations and amendments or corrections in the international registrations are done by the international bureau of the WIPO. In case of objectionable corrections or amendments in the international registrations where India has been designated, the TMR office notifies its objections concerned. In case you need any assistance or service for availing benefits of Madrid Protocol of Trademark filing then please contact us.