The registration of a trademark in the domestic market is rather different from that in the international one as the benefits provided to the proprietor in both the cases differ significantly. The registration process provided for both of them is also different. Encouraging the registration of trademarks internationally was made possible because of the Madrid System. India consented to the system by becoming a signatory to the Madrid protocol and a member of the World International Property Rights Organisation (WIPO) in 2013.
It is one of the most significant treaties in international law for trademarks and their registration. It provides for a very efficient and cost-effective way for holders of trademarks to register it in various jurisdictions. Intellectual Property Organization's International Bureau administers the Madrid System and harmonizes the conveyance of requests for protection, renewals and other apposite documentation to all members.
International registration can take place in two ways by either applying in each country where the person wants to enjoy the benefits of a trademark or by applying under the Madrid system. The former method may be used if the country is not a part of the Madrid system wherein, the applicant would have to follow the laws in the concerned country for the registration whereas, in the latter method the registration can be instituted by filing for an international application before the registrar of trademarks for the specified country or countries.
For example, Micromax an Indian mobile manufacturing company has 30 Trademark registrations that cover around 70 percent of its global products, which was made possible because of the fast and cost-effective application filing in the Madrid system.
Madrid Protocol also makes registration to countries that subsequently become a part of this system by filing an application through similar proceedings. This has centralized the entire registration process and has allowed for an efficient way of applying by a single application and a single payment of fees.
REGISTRATION OF FOREIGN TRADEMARKS
Trademarks registrations are territorial in nature, therefore, in order to be able to enjoy the benefits in a nation other than the parent nation, i.e. the nation where the trademark originally developed, the applicant has to file for an application for registration in other nation(s). Since there are 91 countries who are a part of the Madrid system the registration procedure is less demanding in the member nations.
In order to file an application in India, it is imperative that an equivalent application is filed in the country from where one is seeking to expand his jurisdiction. The applicant has the liberty to simultaneously file for registration in multiple countries who are a part of the Madrid system in a single application. The fees for the same depends on the classes and the countries in which the applicant wants to register.
The application needs to be submitted to the Trademarks Registry in the office of origin wherein, the mark is certified and forwarded to the World Intellectual Property Rights Organisation (WIPO). A formal examination of the application is conducted by WIPO to ensure that the application is in order. After approval has been given to the mark it is recorded in the International Trademark Register. Thereafter, a certificate is sent to the applicant, of the mark having been registered internationally and a notification is issued to the Intellectual Property Office in all the territories where he wanted the mark to be registered.
The Trademark Office in India will thereafter within 12 to 18 months decide whether protection can be granted to the mark of the applicant as per the domestic legislations of the country, this decision is notified to the applicant via WIPO. If the mark gets accepted a notification regarding the grant of protection is issued.
In case an Indian company or national wants to make an international application they have to follow certain conditions. Firstly, the applicant should either be an Indian national or should be domiciled in the country or should have a business establishment in India.
Secondly, he should have an application registered with the Indian Trade Marks Registry which will be used as the basis for subsequent international application, which means that there should be a ‘basic mark’ in India, which has either been registered or applied for protection in the country at the Indian Trademarks Registry. The applicant may choose more than one country under the Madrid System wherein he wants the registration to take place.
BENEFITS OF INTERNATIONAL REGISTRATION
An international registration confers on that proprietor the exclusive rights to commercialize his goods or service for which the mark has been registered. He also gets the authority to grant licenses which will further help with the expansion of business by way of franchising or merchandising. It prevents counterfeiting of products overseas that have gained international goodwill if they aren’t registered.
It helps expand the global popularity of a company by providing a larger consumer base. This process is also economical and easy as the applicant can also change his details by sending a document to the International Bureau. If an objection with respect to the application is not raised within a year or 18 months by the registration office of the country where the applicant is seeking registration it is deemed to have been accepted.
The world has become a smaller place with rapid technological advancements taking place everywhere, this has also increased the ease and frequency with which counterfeited products can be created. It has become very important to safeguard the original products of a manufacturer as it benefits not only the consumer but the producer as well.
The former can make a more informed choice and can trust the trademark which signifies that the product comes from a genuine and trusted source while the latter enjoys economic benefits and get to expand their trade. In the world where economies are growing at a fast pace, it is important to encourage international facilitation of protection of intellectual property.
With the Madrid System coming into place this process of international harmonization and granting international recognition of intellectual property rights has helped a lot of new enterprises in establishing internationally and creating a brand for themselves.