Introduction

Trademark Registration in India and International Trademark Registration should not be confused between. They both have different registration procedures and provide different benefits to a company. As the name suggests the former protects the products and services at a national level and the later do the same but at an International level. The Madrid System for the International Registration of the Marks is the responsible international system for facilitating the registration of trademarks worldwide. India acceded to the Madrid Protocol and became a member of the by the World Intellectual Property Rights Organisation(WIPO) on 8^th July 2013. Filing an application will give you an International Trademark which is enough to protect your mark, product or services in various jurisdictions. This application can be filled through a trademark office or e-Filling can also be done.

Requirements for International Registration:

Eligibility

1. The right to File:

• have a business in, or
• be domiciled in, or
• be a national of,

a country which is a party to the Madrid System of International Registration of Marks.

The Trademark Office of your country in which you have a national trademark registered will be your Office of Origin (e.g. Trademarks Registry in India). This office acts as your link for filing an international application.

2. Basic application/registration (“basic mark”)

You should have already filed an application for or registered a mark in your own country. This application or registration is known as the “basic mark”.

Process for International Trademark Registration in India

Stage 1: Application through the Trademarks Registry (Office of origin)

The registration or application is known as the basic mark. You then need to submit your international application through the Trademarks Registry, which will certify your mark and forward it to WIPO.

Stage 2: Formal examination by WIPO

WIPO will only conduct a formal examination of your international application to check that your application is in order. Once it is approved, your mark will be recorded in the International Trademark Register and published in the WIPO Gazette of International Marks after which WIPO will then send you a certificate of your international registration and notify the IP Offices in all the territories where you wish to have your mark protected.

Stage 3: Substantive examination by the National or Regional Trademark Office of the designated Contracting Party

The Trademark Offices of the countries where you want to protect your mark will decide within 12 or 18 months whether to grant your mark protection in accordance with their domestic legislation. WIPO will record their decisions in the International Register and then notify you.

If a designated country refuses to protect your mark, either wholly or partially, their decision will not affect the decisions of other designated countries. You can challenge a refusal decision directly before in that country according to their laws. If a designated country accepts to protect your mark, it will issue a statement granting protection.

• The international registration of your mark is valid for 10 years.
• You can renew the registration at the end of each 10-year period directly with WIPO with effect in the designated country concerned.

Generally, a company seeking a global expansion looks for an International Trademark.

• Internation Trademark is accepted worldwide and has certain benefits.
• It makes the customers overseas rely on you, trust you and even potential investors and partners see this mark as an overall trust benchmark.

If you are seeking International Trademark, you need to fill an online form or you can submit one in the Office of the Registrar of Trademarks with the prescribed fees. If the application is passed without any objections the mark is recorded in the International Register.

• But before going through an International Trademark Registration it is mandatory to have a National trademark registered.
• After the application passes successfully your trademark is then published by WIPO thus protecting your product, mark, services in up to 98 countries.
• The mark is then valid for ten years after which the mark will be required to be renewed. All applications can be directly sent to WIPO by e-mail, regular mail or facsimile.
• International form MM2 is required to be filled since MM1 and MM3 are no more acceptable.
• For registering your trademark in the United States, you have to also file form MM18. Forms MM2 and MM18 can be directly obtained from the official website of WIPO. Though International Trademark Registration will protect your product in up to 98 Countries, you should fill in only the countries where you provide, distribute your services and products keeping in mind about your finances.

Therefore, we can conclude that International Trademark registration can be done over different countries solely dependent on you by filing MM2 and MM18 under Madrid Protocol.

.The only thing you need to keep in mind is that you need an already registered National trademark for the product you wish to have an International Trademark for and you should refrain from copying or having similar marks and products that are already registered internationally, it may cause objections