In the 21st-century business sector, the emphasis on global trademark registration has heightened, fuelled by the escalating instances of counterfeit products in leading global brands.
Trademark rights, similar to other Intellectual Property Rights, have influence within their respective country of origin. IPRs serve as a protective mechanism, granting inventors the ability to safeguard their discoveries or inventions for a finite duration. Each country has crafted distinct legal frameworks that acknowledge and support trademark rights, provided these regulations align with the jurisdiction’s policy objectives. The term rights of global trademark include a no. of rights across multiple jurisdictions. These trademark rights exhibit versatility in relevance and applicability, and their existence is not contingent upon shared factors.
Introduction to Foreign Trademark Registration
Foreign Trademark Registration is a crucial step for trademark proprietors seeking to protect their rights on an international scale. The process involves utilising International Registration, a mechanism facilitated by the World Intellectual Property Organisation’s International Bureau. This allows trademark owners to file a unified application, streamlining the registration process across multiple jurisdictions, adhering to the policies of the Madrid System.
Application Procedure under the Madrid System
To initiate the registration of an International Trademark under the Madrid System, the applicant needs to engage with the relevant trademark office, also known as the contracting party’s office. In the case of Indian businesses, India serves as the Registrar of Trademark. The contracting party’s office carefully assesses the application for the trademark, determining its eligibility for further processing. If the application meets the criteria, the office proceeds to communicate with the International Property Office in Geneva, Switzerland, marking a crucial step in the international trademark registration process.
An Overview of The Madrid System
The Madrid System, established in 1996, resulted from a collaborative effort during successive sessions of the Madrid Convention that spanned from 1891. This system serves as a framework to administer and revise international policies pertaining to trademark registration. It provides a streamlined approach for trademark proprietors to register their trademarks globally and enjoy associated rights in multiple nations simultaneously.
Key Features of the Madrid System
According to the Madrid System, the process of registering a foreign trademark and asserting its related rights of global trademark involves submitting a request for global trademark rights. This enables the trademark owner to enforce their rights in more than one nation concurrently. To initiate this process and avail these rights of global trademark, the prospective trademark owner must engage with the office of origin as a crucial first step in navigating the complexities of the Madrid System.
Application Process for Foreign Trademark Registration
The application process for obtaining a foreign trademark through International Registration and availing the benefits of rights of global trademark is governed by the norms established by the Madrid System. This process involves collaboration with the contracting party’s office.
1. Filing the International Registration Application
Applicants are required to work in accordance with the norms set by the Madrid System when filing an application for International Registration. This is a crucial step in initiating the global trademark registration process.
2. Approval and Registration in the Global Database
For Indian business organisations, if the Indian office of origin validates the application, the trademark is registered in the global database. Subsequently, this event was announced in the World Intellectual Property Organisation. Certification is then issued by the International Bureau, notifying all nations under contract with the Madrid System. This measure aims to safeguard the rights of trademark owners in each participating nation.
3. Objection Period and Resolution
Designated offices have a flexible period of 12-18 months to raise objections against the trademark application, if any. Objections, if raised, are investigated by the International Bureau. Complaints must adhere to a specified format; otherwise, they are rejected. If no challenges arise from the offices of member nations, the trademark rights are granted to the applicant by each country’s designated officials.
4. Duration and Renewal of Trademark
The validity of an internationally registered trademark is ten years, following the policies outlined in the Madrid Protocol. After this period, the designated office of origin or the WIPO manages the authorisation of trademark renewal, ensuring the continued protection of the registered trademark and the rights of global trademark.
Benefits of Foreign Trademark Registration Over National Applications
When deciding to register a trademark application across multiple jurisdictions, opting for International Registration offers several advantages and rights of global trademark compared to pursuing separate national applications. This approach allows businesses to obtain rights of global trademark in multiple regions through a single application, following the centralised policies set by the international council of the World Intellectual Property Organisation. The benefits associated with International Registration include:
1. Simplified Process and Centralised Policies
Trademark owners can secure trademark rights in various jurisdictions by submitting a single application following the centralised policies established by WIPO. This centralisation streamlines the application process, making it more efficient and accessible.
2. Examination and Approval
WIPO reviews the legitimacy of services and goods offered, determining relevant fees, and directing the International Registration to the list of enrolled jurisdictions. The standardised examination protocols contribute to the predictability of application scrutiny processes. While there is a waiting period of 12 to 18 months for the verdict from the intellectual property hub of each concerned country, this period is often shorter than the time taken by national trademark offices.
3. Extension of International Registrations
Trademark owners can successfully extend International Registrations in all listed nations using the e-filing system provided by the Madrid Protocol. This electronic filing system facilitates a more efficient and streamlined process for extending trademark protection internationally.
Despite the benefits, there are some considerations associated with filing an International Registration, such as the correlation of an International Registration to the active status of an essential national registration or application for a limited time.
Prerequisites for Securing Rights of Global Trademark
The World Intellectual Property Organisation has established three primary criteria for determining eligibility for international trademark approval in India and to avail the rights of global trademark. These prerequisites are crucial for individuals or entities seeking rights of global trademark:
1. Citizenship or Domicile in India
The person filing the trademark request must either be an Indian by birth or domiciled in the country. Additionally, eligibility extends to individuals who own a productive venture or commercial organisation in India, allowing them to apply through the Indian office of origin.
2. Prior Indian Trademark Registration
Applicants must have previously secured an Indian trademark registration with the Registry of Indian Trademarks. Failure to fulfil this criterion results in the rejection of the international application. The rights conferred by the International Registration mirror those obtained through the Indian trademark registration.
3. Consistency in Goods and Services Listing
It is essential to ensure that the services or goods listed in the application for international trademark registration align precisely with the national registration or application. No additional services or goods should be included, maintaining consistency with the original filing.
For those applying for a trademark under the Madrid System, it is essential to select more than one member nation from the list of eligible countries. This selection ensures the safety and protection of the trademark in all chosen countries for the next ten years by default. Careful consideration of member nations within the application is vital for maximising the global reach and longevity of trademark rights under the Madrid System.
Final Thoughts
Securing the rights of global trademark through mechanisms like the Madrid System and adhering to WIPO’s eligibility criteria is vital for international brand protection. The streamlined process not only facilitates simultaneous registration across multiple jurisdictions but also ensures standardised examination protocols and efficient extensions of trademark registrations. The conferred rights of global trademark are similar to those obtained at the national level, emphasising consistency in goods and services listing. While challenges exist, such as the correlation to national registrations and limited application periods, the benefits of a unified global approach to trademark protection significantly outweigh these considerations. In an interconnected world, these rights empower businesses to safeguard their brands on a global scale, advancing innovation, commerce, and brand integrity.
