There are two ways to file international trademarks from India. The first way requires filing a trademark application through a special organization called WIPO. WIPO enables filing in multiple countries via Madrid Protocol. The second way is by hiring an attorney in any country of interest to register a trademark in that country.
The Madrid Protocol is a way to register trademarks in over 106 countries. It is easier than filing trademark applications in each country of interest. It still does not grant an “international trademark”. The trademark still requires approval in each country of interest.
You file an international trademark application to protect your brand globally. International trademarks are less expensive than ones that are applied in each country.
What is the Madrid Protocol?
The Madrid Protocol was set up by the World Intellectual Property Organization (WIPO) in 1989. It makes it easier for applicants to register trademarks in member countries. Madrid Protocol replaced the need for bilateral agreements between countries.
The trademark process starts when an application is sent to a Madrid Union Office. The examiner there will check that the application is correct. It will also be sent to another country for examiners to see if it can be registered in that country.
An international trademark application can be applied for goods or services in as many classes as needed.
Once an international registration has been issued, it is valid for ten years. Applicants can renew the trademark for ten more years, every ten years. In the future, if the owner of this registration wants to sell it, they can record that on a registry in Madrid. A trademark via Madrid Protocol is applied after registration of the trademark in the applicants home country.
*https://www.wipo.int/treaties/en/registration/madrid/summary_madrid_marks.html
How to file a trademark application under Madrid Protocol?
The first step is to make sure your trademark has been registered in your home country. You’ll need to submit your trademark application to WIPO via the Madrid Protocol* website. The trademark application includes details about what you are trying to register, its date of first use, and where it is used for goods or services.
Once the trademark application is submitted, you’ll wait anywhere from two weeks to three months for a response. If everything goes well, a notice of the trademark registration is published in the WIPO Gazette of International Marks. The gazette is notified to all countries of where trademark protection is required. Each country issues an approval or refusal within 12 months (18 months in some cases).
The fee for an application has three parts. One is a basic fee, one is a fee for each class of goods or services, and the last is a fee for each country selected by the applicant.
Benefits of Using Madrid Protocol
International applications under the Madrid protocol are cheaper, faster, and easier.
- Lower cost due to one-time payment of application fees and filing fees. In national application, these fees, along with attorney fees, are paid in each country.
- Less time for approval since the processing is via a single entity.
- Easier to manage via a single tool provided by WIPO
Disadvantages of using the Madrid Protocol to register international trademarks
The trademark registration in the applicant country is the first step for applications under the Madrid Protocol (e.g., India). The international application will be refused if the trademark is rejected or denied.
Tying the fate of the international trademark registration to the one in the home country is a very big risk.
Alternate method – Registering trademark in each country individually
Filing national trademark applications in each country is less risky than International applications. It does have certain disadvantages.
The most prominent disadvantage is the cost involved in hiring local attorneys. The application process takes time and needs to be done right. It can take longer depending on the level of detail in the application. In the end, the examiner may still deny the application.
Conclusion
It is cheaper, faster, and easier to use Madrid Protocol than applying for a trademark in several countries. It lasts for ten years and can be renewed as long as you renew it by recording your assignment on the Madrid International Register. An applicant’s home country must have already registered their trademarks.