International Trademark- Introduction
Trademark registration is generally territorial in nature. Separate applications are required to be filed in each country where the applicant wishes to register his trademark.
If the applicant plans to sell and market internationally, it is essential for the applicant to register its trademarks in those countries. Usually, the party registers its mark first owns it. Therefore, it is significant too for the applicant to register his trademarks in each country where he considers that his company would to be able to secure potential and key market. A national trademark registration stops at the border and it does not afford the rights to the owner of the trademark outside the country in which it is registered.
Most companies which plan to expand into other countries often realize the value of registering its trademarks abroad once it is too late, that is, once they are faced with counterfeiters/imitators or once they are an accused of infringing the rights of others. The risks of doing such acts are very high and the consequences faced by the applicant may be extremely costly and detrimental to the company’s entire business and the export strategy. It can be a severe financial liability for an applicant to invest in a brand and promote it in the local market. Then find that the brand cannot be registered or used internationally and the applicant will have to finally abandon that investment.
Benefits For The International Trademark
- Registering a trademark abroad gives the company an exclusive right to commercialize its products in the international markets.
- This not only provides the company a solid foundation to stop the counterfeiters but also helps to ensures that the company enjoys exclusive rights over what may be one of its most valuable assets.
- Registering a trademark abroad also helps to provide the opportunity to license the trademark to others or it may be the basis for a company’s franchising or a merchandising strategy.
Thus, the benefits of international Trademark registration and the protection of one’s trademark clearly outweigh the costs of such registration.
International Application under Madrid Protocol
India has recently joined the Madrid Protocol with effect from 8th July 2013. The Madrid system for the international registration of trademarks provides a single and a cost-effective procedure for the registration of a mark in several territories.
At present, there are 91 countries that are members of the Madrid protocol. If a company intends to file an international application under the Madrid protocol, there be a corresponding trademark application should be filed in India. In an international system under the Madrid protocol, several countries may be designated which are the members of this system.
- The fees for this will depend upon the number of classes and the countries designated.
- The fees can be calculated using the online tool which is provided by choosing the office of origin as India. Then select the number of classes and then specifying whether the mark is in color.
- In addition, a handling fee of Rs. 2,000/- is also required to be paid to the Indian Trade Mark Registry.
- After filing the application, the mark is examined by each designated member country where the registration is sought to and then the proceeds to registration.
- An international registration under the Madrid protocol is however dependent on the corresponding Indian application for a period of five years from the date of the international application.
- If the applicant wishes to obtain registration in a country which is not a member of the Madrid Protocol, then a separate national trademark application has to be filed directly in each of the respective countries.
Advantages that an applicant enjoys for filing an International Application under the Madrid protocol are:
- The cost is Lower as compared to the individual foreign filings.
- The Managing renewals or the change in address or the change in ownership is an easier and more cost-effective process.
- Additional countries may also be designated at a later stage
Thus international trademark registration helps the applicant to expand his business in other countries without facing the fear that his trademark would be protected in the international platform as well.