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International Trademark Registration

  • Report of Trademark class search
  • Filing of application for trademark
  • Complete follow-up with World Intellectual Property Organization (WIPO)
  • Approval of trademark

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What does International Trademark Registration mean?

The World Intellectual Property Organization (WIPO) controls international trademarks. WIPO is an organization set up by the United Nations (UN) in 1967 that aims to protect intellectual property worldwide. A mixture of WIPO agreements and other national and regional legislation governs the registration and administration of international trademarks. The legal framework for international trademarks is regulated in addition to national and regional laws following trademark-related treaties.

  • Paris Convention adopted in 1883
  • Madrid Agreement (Marks) concluded in 1891
  • Madrid Protocol concluded in 1989
  • NICE Agreement entered into in 1957 defining the NICE Classification Agreement
  • Singapore Treaty of 1994
  • Trademark Law Treaty
  • Nairobi Treaty

Madrid System for International Trademark Registration

Madrid process is a centrally managed international registration system for trademarks that enables worldwide registration and management of trademarks. This scheme finds its legal basis in the Madrid Treaty, which is the multilateral international trademark registration agreement of 1891 and the Madrid Protocol of 1989.

One can simultaneously register an international trademark in multiple jurisdictions through the Madrid System. This does not mean that it will be one registration; with one request it will establish a package of national rights that can be centrally administered. This is a simpler and reliable way to file a single application and pay a single amount of registration, security and trademark management fees in 117 countries that are members as contracting parties. Everyone can apply for international trademark registration from a start-up to a global corporation, regardless of the size of an entity.

What are the advantages of the Madrid System?

Economical

One of Madrid System's most important characteristics is that it helps you avoid unnecessary spending. In this scheme, it requires payment of only one set of charges. The advantages are not just in monetary terms, but they also save a lot of time and effort. There is no need to file separate applications for each jurisdiction in which you want to protect your mark.

Simplicity

This system offers a global platform for unified trademark registration and management. It is adequate to send a single application, removing the need to hire local members in various regions and language barrios. All further changes can also be made after registration through the Madrid process.

Worldwide Exposure

This model enables the broad international coverage. This covers 117 countries and accounts for around 80% of world trade.

Reliable handling of the brand

A streamlined process for the registration of foreign trademarks improves the organisation's product effectiveness. With this centralized system, you can secure your brand name in multiple territories.

Who all are eligible to use Madrid System?

Everyone with any kind of personal or business relationship with any participant of the Madrid system is entitled to apply under this scheme for registration.
Now the question arises who the Madrid process leaders are. There are a total of 101 network members representing a total of 117 nations. Both members are parties to the Madrid Treaty and the Madrid Protocol referred to above.

What are the system of International Trademark Registration?

The international registration system for trademarks is made up of three very important parts. Here we have specifically mentioned these three pieces:

Part I: Trademark Search

It is advised to ensure that no specific trademark is registered before applying for international trademark registration and for this applicant is required to make search on the WIPO’s Global Brand Database to find out whether any trademark is already registered or not in any of the target markets the applicant wishes to apply. The following 3 variables can be used to base this search:

  1. Text used in the trademark
  2. Image used in the trademark
  3. Class of goods or services to be used

Part II: Registration Application Filing

Once you have checked the trademark's availability, you are ready to apply for an international trademark. The most critical condition is that the trademark is either already registered or applied for in the home country office. If they are a citizen of an eligible country one can opt for the simpler process of international trademark registration and file via Madrid Process. The application must be sent to the regional trademark office of the country of origin and forwarded to the WIPO after due review. The office of the WIPO and the agencies of the countries for which it is implemented will further examine it. We will explain in detail later about the application process, the documents to be filed and the fee structure.

Part II: International Trademark Management

The effective management is very critical once the international trademark is successfully registered Under the Madrid process, trademark regulation was made very easy and streamlined. For each function, very clear guidelines are defined along with correct forms The management of trademarks includes the following things:

  • Trademark renewal in every 10 years
  • Payment of fees through electronic mode
  • Expansion of geographical range by filing in more countries
  • New representative appointment
  • Transfer of Ownership Transfer
  • Trademark Cancellation 

What are the fees for international registration of trademarks?

Under the Madrid scheme, the charges related to the processing of applications for international trademarks include three components;

  • For the mark to be registered; basic application fees is required.
  • A complementary payment is paid for each contracting party (country) for i.e. the jurisdictions in which the mark is to be secured. In some cases, these complementary charges are individual charges.
  • A supplementary payment is levied for each class of trademark goods or services. Some processing charges may also be levied by the originating office to confirm and forward the request to WIPO. In India, Rs. 2000 sets these handling charges.           .

What are the classification of Goods and Services under WIPO?

An international standard for the classification of goods and services in order to register the trademark is created according to the NICE Agreement which is enacted at the Nice Diplomatic Conference on June 15, 1957. This classification form is also referred to as Nice Classification or NCL. Such classification is based on the classification prepared in 1935 by BIRPI, WIPO's predecessor.

The category originally consisted of 34 goods and services categories. This list has been updated many times over the years. On January 1, 2018, the latest version of the 11th edition was introduced. This new version is made up of 45 classes in total (34 goods and 11 services).

The use of NICE Classification is compulsory for countries that are part of the NICE Agreement and not for national registration of marks as well as international registrations.

What are the Pre-requisites for Registration?

  • When you intend to apply for international trademark registration, it is mandatory that you have already registered and applied for the same trademark in the country of origin's Intellectual Property Office, i.e. the country from which the application will be filed.
  • The person intending to apply for the registration of an international trademark need to have a personal or professional relation with minimum one of the Madrid System contracting parties. The country with which they have such a relation will be the place from which they apply, i.e. the origin office. You can describe this relation in any of the following ways;
    • The applicant is the contracting party's domicile
    • The applicant is a contractor's resident
    • In the contracting party, the applicant has a business. Such business can be an industrial or commercial establishment, whether real or effective.
  • What are the steps of International Trademark Registration under Madrid System?

    Following steps must be considered in order to obtain the International Trademark Registration;

    Step 1: Application Filing

    The registration application will be submitted via the MM2 application form. An additional MM18 (Declaration of Intent to Use the Mark) form together with MM2 is required for all international applications in which the United States is listed as a designated party. Such form must be filled out and submitted appropriately together with the necessary attachments to the office of origin's national or regional IP Office. For the same thing, the IP Office might charge other management fees that may differ from country to country. These charges are in Rs. 2000 in India.

    Step 2: Certification and submission to the WIPO

    Certification of the same and status of the registered or applied trademark shall be carried out by the national or regional IP Office After obtaining the application and shall forward the same to WIPO.

    Step 3: Formal examination by WIPO

    WIPO carries out a formal review of the application submitted to it. The trademark is licensed and registered in the International Register if it is assured of its validity. When registered, they are published simultaneously in the International Marks Gazette of the WIPO.

    The applicant is issued a certificate of registration and the IP offices of the jurisdiction to which the WIPO has applied are notified.

    Step 4: Further examination by IP Office of Contracting Party

    The respective IP offices are expected to review the request on the basis of their laws and relevant rules and regulations after obtaining the intimation of such registration and to inform the WIPO within 12 to 18 months of their judgment. This judgment is registered in the International Register and communicated to the applicant of the same.

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