A monthly in-house publication from White Forest Law Offices Volume 12, July 2013
International Trademark filing Through Indian Trademark registry 2
India recently joined Madrid protocol (an international treaty administered by World Intellectual Property Organization (WIPO). This treaty enables international filing of trademark. Indian trademark Act and Rules were amended to accommodate the treaty provisions. Indian trademark registry website i.e. www.ipindia.nic.in has provided online international trademark filing facility under Madrid protocol. Now, all Indian nationals and companies can file international trademark application through this facility. Here is a short note on Madrid protocol and facilities offered there under.

The international registration of Trademark is governed by two treaties, firstly Madrid agreement concerning the international registration of marks secondly the protocol relating to Madrid agreement, both these treaties are administered by the international bureau of WIPO which maintains the international register of trademarks and publishes WIPO gazette of international marks. The said WIPO database is called ROMARIAN. The system provides protection in each designated countries (designated countries means countries were applicant would like to get registration) as if the marks had been registered in each country on date of the first application in our country, if designated countries makes no provisional refusal with in 12/ 18 months of application, it is assumed that marks are registered in that designated country.

An international registration is equivalent to bundle of national registrations, thus management of trademark registration in each country could be avoided. There is only one request to be made for renewal of registration or for making changes such as changes in ownership or in the name and address of the holder or a limitation as to list of goods or services. All these can be recorded in international register through a simple procedure. An international application can be filed only if the Trademark has already being registered or applied in the country of origin (our trademark registry). An international application is filed through our Indian trademark office. Indian Trademark office charges a handling fee and there is a fee collected by WIPO, i.e., basic fee and the fee applicable in each country. Though only a single application is filed; each designated country (means countries were applicant would like to get registration) will independently examine the application to see whether the application is eligible to register in their concerned register, hence individual designated country retain their rights to refuse your application. This makes it further clear that infringement of an international registration must be brought separately in each of the country were infringement happens. An international registration is always dependent on the validity of registration in your home country. Thus, if the home country registration is cancelled or altered in any manner the international registration will also be impacted.

Even if your international registration was not initially designated only to a limited number of countries, you have the liberty to add on countries by subsequent designation. All changes in the ownership of the mark, limitation, remuneration, cancellation or license, etc., related to mark would also be recorded in international register as like we do in trademark registry database. International registration is valid for 10 years and could be renewed for further 10 years on payment of fees.

International registration has several benefits, you need to file only one application in one language and pay fees together, and hence filing in multiple countries in multiple languages, co-ordinating with law firms in each country all could be avoided now. You don’t have to wait for examination of mark by each registry, if no refusal is made by the concerned trademark registry within 12 months (some countries have 18 months time), it is deemed to have been registered in that country. Even subsequent changes in record of ownership are also simplified.

We will keep you informed of all practical processes and issues as and when they arise. If you want to know more about this facility, please do feel free to write to us at lawyers@whiteforest.org

White Forest Law Offices
No. 882, 1st Floor
11th Main, 3rd Cross, HAL 2nd Stage
Indiranagar, Bangalore 560 008, INDIA
Ph: +91 80 411 611 06, Fax: +91 80 252 837 53
Courtesy and Disclaimer: The above is a collection of information from various government and other sources. Nobody should act or perform anything solely based on the above information. White Forest is not liable for any actions or omissions based on the above note. This should not be considered as a legal opinion.
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