International Trademark

How can I protect my trademark?

At the national/regional level, trademark protection can be obtained through registration, by filing an application for registration with the national/regional trademark office and paying the required fees. At the international level, you have two options: either you can file a trademark application with the trademark office of each country in which you are seeking protection, or you can use WIPO’s Madrid System.

Madrid Protocol Trademark System

It can be used to file and register the trademark in the home country, for example, a resident of India will file a trademark in India first and subsequently be able to secure wider trademark protection globally. Once the Indian trademark application is filed before the Indian Trademark Office, one can extend the trademark registration in other countries by using a single trademark application. The details of the single trademark application should include desired countries in which you want to seek trademark protection. Overall costs for filing trademark under Madrid protocol will depend on the applicable official government fees of the designated countries in which you are applying to register your trademark brand, and the number of trademark classes.

Madrid Trademark Application in India

The Indian Trademark Office is authorized to receive an international trademark application under Madrid Protocol.

Requirements

The basic criteria to file Madrid Trademark Application in India requires applicant to be eligible to file said trademark application, which essentially requires the applicant to be an Indian national or having a place of business in India. In addition, the Indian trademark office requires an existing trademark application, known as the basic application, and designation of one or more countries wherein international trademark protection is required.

Requirements for Obtaining International Trademark Registration

There are three main requirements for obtaining an international trademark registration in India:

• The applicant should be a national of India or domiciled in India or have real and effective business or commercial establishment in India.
• The applicant must have a national (Indian) trademark application or registration of a trademark with the Indian Trademarks Registry. This national trademark application/registration will be used as the basis of the international application. The international application will have the same trademark as mentioned in the national trademark application or registration; The list of goods and services mentioned in the international application should also be identical with the national mark.
• The applicant in the international application must choose one or more other member countries of the Madrid Protocol, where the applicant wants to protect his trademark.

Cost and Fess depends on case-to-case bases.

The author is a company secretary in Practice from Delhi and can also be reached at manjulaur@gmail.com