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Ip protection beyond borders: things to understand about international trademark registration


Gaurav (CEO)     07 February 2019

Gaurav
CEO 
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Registering your trademark allows your “trademark”, the symbol of your trade to be protected under the Intellectual property laws. With this registration, not only you will deter the infringers from infringing on your trademark to use as their own, but you also get the way to expand your business through trademark licensing. This expansion can take your business far and wide.

However, the concept of “far and wide” here is still finite. Trademark registrations are territorial in nature. Once you have your mark registered, it will be protected within the region, within the confines of the country.

But, is there a way to go beyond the borders? Is there a way that your mark is protected beyond the territory of local trademark registration? Yes, there is, and it is called International trademark registration.

International trademark registration: Its significance

If you hear the word “International”, then you can already get the hint of its significance. International trademark registration protects your trademark in the countries that are the part of Madrid Protocol. This is one form of registration that is sought by those who want to conduct international business. However, not many of them understand the nuances associated with international trademark registration process. Understanding the fine points associated with this IP protection makes all the difference.

10 things to know about international trademark registration

  1. Not all the countries come under the Madrid Protocol: Although registering your trademark internationally will protect your trademark on an international scale, it won’t be protected in all the countries. As of right now, there are 117 countries that are the part of the Madrid protocol. There are 195 countries in total. Therefore, if you are planning to protect your mark throughout the globe, you are short of 78 countries.
  2. International trademark registration consists of 2 key agreements: International trademark registration is not a new concept, it is about 130 years old. The first agreement associated with this process was The Paris Convention. It started in 1883. The Paris Convention has about 177 countries currently. The other one is the Madrid Agreement that has 117 countries currently.
  3. If even a single country present in the protocol rejects your mark, your entire application will be rejected: One of the most difficult matters associated with registering your trademark in an international scale is having all the countries accept your mark. To that end, there can be times where a single country rejects your mark. If that happens, your entire application will be rejected.
  4. If your international trademark application is rejected due to the refusal of some countries, then you can reapply on a priority basis: When you are playing at an international trademark ground, there are bound to be rejections. However, you are afforded some concessions as well. If your application is rejected by some countries, you can reapply for trademark registration on the basis of the countries that accepted your trademark application.
  5. You have to choose the countries that you want to protect your mark in:  This is one thing that many get wrong. With international trademark registration, you are not going to automatically get your mark registered in all the countries of the Madrid Protocol. But rather, you will have to select the countries in which you want your trademark protected.
  6. There is no direct way towards international trademark registration: If you are only going by the Madrid agreement, then trademark registration in your country is the first step of international trademark registration. You will first register your trademark locally, then after your registration is successful, you will file the international application. This application will be submitted in the local office. From there, it will be forwarded to WIPO (World Intellectual Property Organization).

However, if you are submitting the application under Madrid Protocol, you can use the domestic application for international registration purpose. That being said, the process is quite lengthy as the Office of Origin will first have to certify the application. Furthermore, the national office takes about 18 months to accept or refuse the mark. That being said, you should go for this option as prior registration is not required.

Note: The Madrid Protocol and the Madrid agreement are the parts of the Madrid system. Madrid Agreement was the agreement that first came into existence back in 1891. However, the latest Madrid Protocol came in 1989 and it is the main part of international trademarking system.

  1. Once you have successfully gone through international registration, you can add in more countries later: After your mark gets the international registration, you can request “subsequent designation” to add more countries later. The subsequent designation is a request in which you request extension to the protection of your original registration. Through this, you can extend the protection of your trademark by adding more countries in which you want to protect your trademark.
  2. Your national trademark registration has an impact on your international trademark: During the first 5 years, your domestic trademark registration is going to have a direct impact on your international registration. To put it simply, if anything wrong happens with your domestic trademark during the first 5 years, then the same can happen to your international mark as well. For example, if for some reason, your trademark is cancelled domestically, your international registration will be cancelled as well.
  3. The Madrid system is not a singular system, it is a combination of systems of the member countries: When you are applying for international trademark registration, don’t mistake that only one office is going to check your application. Each and every member country can, and will come forward to check your application. These countries are going to check your applications under their own national trademarking systems. Therefore, with international trademarks, you are going to have to deal with many trademarking offices across the globe.
  4. The international registration lasts as long as the domestic registration: Just like the domestic registration, where the protection of your mark will last up to 10 years, international registration too, lasts for the same amount of time. Furthermore, much like national registration, you are allowed to renew your international registration once 10 years are over.

 

Conclusion:

International trademark registration is as straightforward as it is confusing. While you can get protection for your mark in multiple countries, you would need to choose the countries. The amount of scrutiny the international application would be put under is high as well. However, once you get the registration at an international scale, the mark becomes worth a lot more.




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