A monthly in-house publication from White Forest Law Offices Volume 12, November 2013
INTERNATIONAL TRADEMARK REGISTRATION FROM INDIA:
STEP-BY-STEP PROCESS
Till recently, for Indian companies to get trademark registered in other countries, they had to apply in each country separately. For this, they had to engage attorneys in each country, pay fees in each country and follow documentation requirements specific to each country. It was time consuming and costly. Maintaining the registration thereafter was also difficult as renewals in each country would be at different points of time. With India joining Madrid Protocol, all these procedural hassles have been removed to a great extent. Now we can apply for international trademark registration through the Indian trademark office.

In order to apply for an international trademark, the applicant or the agent (attorney) should have a digital signature. The digital signature should be registered with the trademarks registry website http://www.ipindia.nic.in .While doing so, each applicant or agent (attorney) has to obtain a log-in ID and password. Before filing an international trademark application the applicant should have an Indian trademark application or a trademark registration in India. Based on the Paris convention, if an applicant flies an international application within six months from the date of filing of the Indian trademark application, the said international application will be considered as filed on the Indian trademark application filing date.

Before filing an international trademark application, it would be appropriate for you to decide whether your logo or trade name, caption, shape of packaging or other trade symbols connected with your product or services are eligible for registration. To get the trademark registered, the mark should be distinctive and distinguishable from other trademarks. For this you need to do a search in all the relevant trademark registry databases to identify other similar or deceptive trademarks. To get a registration mark, there should be a unique trade symbol that connects you with your products and services. While registering a trademark you should also consider whether you should apply for colour images or for the black and white images of your trademark. A trademark in colour gives protection to those specific colours, whereas a black and white application covers all colours.

If you are engaging an attorney to file the trademark for you, you need to provide power of attorney in a prescribed format. The trademark law has classified various goods and services in to 45 classes. This is based on the international treaty called NICE agreement. You need to identify the appropriate classes relevant to the products and services offered by you. In some countries use of the trademark in that country is a prerequisite for registration. But in most of the countries intent to use is sufficient. Once all these aspects are addressed, then log on to http://www.ipindia.nic.in and select the sub section” comprehensive e Filing services” and log-in using your ID. International application should be filed in a prescribed format (form MM2E). Once the application filled appropriately, you need to file the application online. The Indian trademarks registry will charge Rs. 2000/- as application fee. While making this international application you need to select the countries where you wish to get the trademark registered. Once all formal requirements are met, Indian trademarks registry will forward the application to World Intellectual Property Organization (WIPO). WIPO will issue a demand notice asking the applicant to pay the international filing fee. International filing fee is in Swiss frank (653/-where no reproduction of the mark is in color, Swiss franc 903/- where any reproduction of the mark is in color and 100/- as Complementary fee for the designation of each designated Contracting State). International bureau of WIPO thereafter forwards the international application to the countries concerned where you opted for registration. In addition to the international filing fee, you need to pay the national trademark filing fee of each country where you want the registration. The current trademark fee of each country is as below.

Country Amount in Swiss francs
 
Armenia 221
22		 for one class
for each additional class
 
Australia 407 for each class of goods or services
 
Bahrain 274
274		 for one class
for each additional class
 
  where the mark is a collective mark or a certification mark:
 
  297
297		 for one class
for each additional class
 
Belarus 600
50		 for three classes
for each additional class
 
Benelux 211
21		 for three classes
for each additional class
 
  where the mark is a collective mark:
 
  301
21		 for three classes
for each additional class
 
Bonaire, Saint Eustatius and Saba 195
20		 for three classes
for each additional class
 
  where the mark is a collective mark:
 
  279
20		 for three classes
for each additional class
 
Bulgaria 376
25		 for three classes
for each additional class
 
  where the mark is a collective mark or a certification mark:
 
  683
62		 for three classes
for each additional class
 
China 249
125		 for one class
for each additional class
 
  where the mark is a collective mark:
 
  747
374		 for one class
for each additional class
 
Colombia 387
193		 for one class
for each additional class
 
  where the mark is a collective mark or a certification mark:
 
  516
258		 for one class
for each additional class
 
  First Part:
 
Cuba 274
91		 for three classes
for each additional class
 
  where the mark is a collective mark:
 
  320
91		 for three classes
for each additional class
 
  Second Part:
 
  82 independent of the number of classes
 
  where the mark is a collective mark:
 
  82 independent of the number of classes
 
Curaçao 272
28		 for three classes
for each additional class
 
  where the mark is a collective mark:
 
  540
55		 for three classes
for each additional class
 
Denmark 419
107		 for three classes
for each additional class
 
Estonia 176
56		 for one class
for each additional class
 
  where the mark is a collective mark:
 
  240
56		 for one class
for each additional class
 
European Union 1111
192		 for three classes
for each additional class
 
  where the mark is a collective mark:
 
  2070
383		 for three classes
for each additional class
 
Finland 279
100		 for three classes
for each additional class
 
  where the mark is a collective mark:
 
  378
100		 for three classes
for each additional class
 
Georgia 314
115		 for one class
for each additional class
 
  First Part:
 
Ghana 129
129		 for one class
for each additional class
 
  Secound Part:
 
  86
86		 for one class
for each additional class
 
Greece 133
24		 for one class
for each additional class until the tenth class
 
  where the mark is a collective mark:
 
  663
120		 for one class
for each additional class until the tenth class
 
Iceland 180
41		 for one class
for each additional class
 
  where the mark is a collective mark:
 
  180
41		 for one class
for each additional class
 
India 61 for each class of goods or services
 
  where the mark is a collective mark or a certification mark:
 
  175 for each class of goods or services
 
Ireland 325
93		 for one class
for each additional class
 
Israel 386
290		 for one class
for each additional class
 
Italy 121
41		 for one class
for each additional class
 
  where the mark is a collective mark:
 
  403 independent of the number of classes
 
  First Part:
 
Japan 114
87		 for one class
for each additional class
 
  Second Part:
 
  380 for each class of goods or services
 
Kyrgyzstan 340
160		 for one class
for each additional class
 
Mexico 193 for each class of goods or services
 
New Zealand 115 for each class of goods or services
 
Norway 345
107		 for three classes
for each additional class
 
  where the mark is a collective mark:
 
  345
107		 for three classes
for each additional class
 
Oman 484
484		 for one class
for each additional class
 
  where the mark is a collective mark or a certification mark:
 
  1211
1211		 for one class
for each additional class
 
Philippines 107 for each class of goods or services
 
Republic of Korea 233 for each class of goods or services
 
Republic of Moldova 307
64		 for one class
for each additional class
 
  where the mark is a collective mark:
 
  370
64		 for one class
for each additional class
 
San Marino 178
47		 for three classes
for each additional class
 
  where the mark is a collective mark:
 
  320
83		 for three classes
for each additional class
 
Singapore 272 for each class of goods or services
 
Sweden 322
126		 for one class
for each additional class
 
Switzerland 350
50		 for three classes
for each additional class
 
Syrian Arab Republic 116 for each class of goods or services
 
Tajikistan 420
16		 for one class
for each additional class
 
Tunisia 155
20		 for one class
for each additional class
 
Turkey 248
49		 for one class
for each additional class
 
Turkmenistan 178
90		 for one class
for each additional class
 
Ukraine 429
86		 for three classes
for each additional class
 
United Kingdom 262
73		 for one class
for each additional class
 
United States of America 301
301		 for one class
for each additional class
 
Uzbekistan 1028
103		 for one class
for each additional class
 
  where the mark is a collective mark:
 
  1543
154		 for one class
for each additional class
 
Vietnam 101
84		 for one class
for each additional class
 


The new mechanism will provide substantial savings in terms of money and time. The management of your trademarks becomes easier as you can renew the trademark registration in all the countries in a similar manner by filing a single request to WIPO.

By Rajesh Vellakkat
 
 
White Forest Law Offices
No. 882, 1st Floor
11th Main, 3rd Cross, HAL 2nd Stage
Indiranagar, Bangalore 560 008, INDIA
www.whiteforest.org
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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