International trademark registrations are of utmost importance to businesses that function globally. In this internet dependent world it is hard to find a company that doesn’t wish to be protected while expanding its business too. Hence, each and every company wants their trademark or service mark to be registered internationally. This is done to avoid any unforeseen scenarios such as withdrawal of services from a particular country if the company becomes a victim of a counterfeit market.
Following are a list of things that we need to know about international trademark applications:
The Necessity of an International Trademark
Unlike any other products, Trademark bears significant importance for a business. They form an important intangible asset that includes name of company, logo, tagline, name of the product or service, product design etc. If not protected, the company stands vulnerable to other companies that may use the branding to promote their goods and services. Herein lays the necessity of registering a trademark before business exports or before expanding business through e-commerce portal.
Agreements Relating to International Trademark
The oldest and largest of all agreements was the Paris Convention for the protection of Industrial Property that dated back to 1883. It applied to all industrial properties such as patents, trademarks, industrial designs, utility models, service marks, trade names. The most important feature of this agreement was that it provided the Right of Priority in cases of patents, industrial designs and marks. This means that within 6 months from the first application filed in any of the contracting states, the applicant can apply for protection in any of the other contracting states too. It implies that this application would have priority over applications filed by other applicants during the same period of time for the same trademark or service mark.
The Madrid System for International Registration of Marks comprises of the Madrid Agreement of 1891 and the Madrid Protocol related to the agreement that concluded in 1989. It is a convenient and economical formula that manages the trademark worldwide covering at least 116 countries. The World Intellectual Property Office (WIPO) is responsible for managing and processing of international application along with regulation of policies.
Global Trademark doesn’t exist
There is no such thing called a global trademark or globally effective trademark. In order to seek protection one has to file the application for international registration of trademark through the Madrid System which has the provision for filing application in multiple countries around the world. It is convenient and frugal.
However, WIPO would be responsible for formal examination of the applications and individual countries would also get the chance of examining the application according to their system.
Globally Differing Costs
In order to make a trademark effective and for the smooth functioning of the business, trademark must be registered locally in individual countries. The regulations and laws that govern the trademark are varied for different countries and so is their cost. Hence before applying for an international registration it would be beneficial for the applicant to gather idea regarding the fees structure prior to application in different countries.
An international trademark registration will be dependent on the domestic registration in the Office of Origin. If the original application used to initiate a Madrid Protocol filing is disputed or denied, then all other trademark protections granted by the Madrid Protocol will be abandoned as well. This is known as the Central Attack in Madrid Protocol which can be fatal for an applicant.
WIPO shows no direct involvement
Applicants trying to file for registration from countries which are participant of the Madrid Agreement are required to submit through the national office on the basis of a finalized registration. Any handwritten forms are not accepted.
Registration and Validity
An international registration is effective till 10 years from the date of registration after which an applicant can renew the registration by paying the renewal fee.
A bit of Research
Unfortunately, many companies don’t conduct a research before applying for an international registration. This is highly recommended as there might be other companies across the globe using similar trademarks. Thus a thorough research needs to be done prior to application so that the time taken for application and cost incurred doesn’t turn out to be futile.
Different types of Trademarks
According to the US Patent Office, “A trademark is generally a word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others.”
However, trademarks can be of various types such as logos, slogans, business names, sound marks, three dimensional marks etc. The rules for registering each of the types mentioned above are different and hence need proper attention while applying for registration.