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.
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.
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:
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.