Many have this question, ‘how do I apply for a trademark in other countries with the trademark of the mother country?’ It’s actually pretty simple now due to the ‘MADRID PROTOCOL’. India joined the Madrid Protocol on the 8th of July 2013. The protocol simplified registration in various countries and makes it easier for one to apply for trademark licensing in other foreign countries. It provides a one, cost-effective procedure to procure a licensing in several foreign nations.
As of today, there around 104 members, covering 120 countries under the Madrid protocol. This article will tell you more about the steps you need to take on acquiring a trademark of your company globally. There are few criteria’s required to trademark your brand in other countries and the first of them is to trademark their product name in their mother country. The mother country is the country where you register your trademark originally. For Indian companies, it is obviously India and you need your name trademarked under the IPR. If you didn’t file it yet please do as soon as a possible cause without this proceeding for your international trademark is not possible.
If you want to file your trademark in the IPR in a few easy steps, Register your Trademark.
–> Before you apply for a trademark in a specific country try to get a got idea on the laws they deal with and the range of your market you will have in that specific country. Also give an elaborate search if there are any other brands in your specific platform with your similar logo, name and tag lines. The favour of origin always gives the one who trademarked as an origin company rather than a company which is foreign. Try to research before you step into the market of another country.
–> Companies listed in the Madrid protocol will make your job much easier. Through a single application, you can gain access to multiple countries thereby reducing the paperwork and the expense. The fees for this procedure are decided based on what class of licensing you are looking for and how many countries you wish to register in.
Also, a payment of Rs. 2,000/- has to be made to the Indian Trademark Registry for the procedure. Once the application has been filed, each country’s officials will examine the documents to check whether it complies with the laws of their country specifically. The international registration depends on the primary application filed for five years. If the country you wish to work does not feature in the Madrid Protocol, then a separate application has to be filed directly to those specific countries requesting a trademark in their country. This may require the help of your attorney as you have to understand the law of the country before you apply.
–> Language may not be a barrier, but sometimes they might be. English words may be similar to any other meaning in another language so try to make sure you check your name and slogan’s meaning in the origin language. It’s not actually a huge problem as long as the name or slogan of your company is actually an offensive word in that country. If the application is approved,
it is featured in the World Intellectual Property Organization (WIPO) Gazette of International Marks, and the International Bureau provides a certificate of the registration after notifying the countries the applicant had requested licensing for in the application. Each country has the right to refuse the trademark that comes to them,
but objections must be raised within 12 to 18 months. If there are no objections, then the registration is considered complete. The mark will be registered for ten years under the Madrid protocol, following which they must be renewed through the WIPO or the first office of origin (IPR).