When a business corporation wants to expand globally, One of the first steps is to register a trademark internationally. This article covers the international trademark process in detail.
How many ways to register a trademark internationally
There are two ways to register trademark internationally-
One is through the Madrid Protocol. And
The other is by taking the service of local trademark consultant for each country for which trademark right is being sought. In this case, the Consultant would file a trademark application with local trademark authority on behalf of you.
So, the biggest myth we have to dispel is that there is a way to internationally register your trademark that’s going to cover all the countries around the world.
There is a separate set of procedure for trademark registration in each country as per applicable local trademark laws and whats why every country will review the application as per applicable laws and approve or object accordingly.
The one exception here is the European Union, where there is one trademark called a European trademark that will cover all the EU countries. So, let’s go back to the two ways that you can actually make these filings.
The first is through the Madrid Protocol. The Madrid Protocol is a system that was created amongst a lot of different countries that said: “look we understand it’s burdensome to go and have to appoint a trademark consultant in each targeted country who will file a trademark application on your behalf in respective countries. Without a consultant in the local country to any country that’s a member of this treaty essentially.” And so what you can do is you file one application with an international organization called the World Intellectual Property Organization(or WIPO), and you check the box for each individual country that you would like rights.
Then, that application gets submitted to all those different countries for their own individual review. And as those individual countries do their reviews, they’ll come back to you and they’ll say “your trademark’s granted here, or your trademarks refused here.” And if there’s ever refusal of the trademark in a particular country, then you have to go hire a local counsel to deal with the refusal.
In our experience, and this is extraordinarily anecdotal and not scientific by any means, but about 80% of the trademarks filed through the Madrid Protocol will just get accepted. And then there’s about 20% that won’t. So, you definitely have a lot of cost savings by filing through the Madrid Protocol because we don’t have to hire as many local councils.
There’s still going to be push back from certain countries and you’re still going to have to go hire local counsels sometimes to deal with that. So, one of the major drawbacks of using the Madrid Protocol is that you have to base that international application through the protocol on an application or registration in your home country.
So, let’s say you’re a business in the United States and you filed your trademark in the US. It’ll take 8 to 10 months at minimum for the trademarks to go through the process here and get registered. But, at the same time you also want to get your trademark registered in China, Australia, India and the EU. So, in this case, if you file the application through the Madrid Protocol for China, India, EU, Australia, and your application got pending here in the US. If for some reason the US government denies your US application and we cannot get it registered, that then causes the refusal of all of those other applications we filed around the world.
So, your Madrid Protocol trademark application is basically dependent on the US application. So, because of this connection between your US application and the foreign applications, a lot of times it can be advantageous to just go in hire a local counsel in these countries to have them file the applications so that you’re not tied to whatever happens in the US process.
So, if based on the preliminary research if you come to the conclusion that your US application might be risky, in that case, you should hire the attorney in Australia, in China, India in the EU to make these filings individually.
It may be a little bit more expensive, but now if something happens to the US trademark, we don’t have to worry because of these other jurisdictions.
It’s tough, but that’s why, you know, if you hire someone like myself or you hire another good trademark attorney, we have relationships with these folks because we’re constantly working in these jurisdictions. So, if somebody comes to me and says “I need to file a trademark in Australia,” I have three or four people that I’ve worked with for years that I trust inherently that we can have filed your application and do so at a really reasonable rate. Because we’ve vetted them and we have preferred rates sometimes with this local counsel.
So, we hope you found this article on how to register a trademark internationally helpful.
How to register a trademark in India for foreign applicant
The way Indian trademark act provides trademark protection to the Indian applicant the same way the Indian trademark act provides similar registration to the foreign applicants.
For foreign businesses want to protect any brand name in the Indian market for doing business in India, there needs to file a trademark application to trademark authority in India.
A trademark can be registered as a wordmark or as a device or a logo, images etc.