What is an International IP Registration?
An International IP Registration allows applicants willing to seek protection for their IP in various countries by filing a single and uniform IP application form, and the IP can be registered in all member states to the treaty governing the international application system, through that single application.
The Madrid System
The Madrid System for International Registration of Marks (the Madrid System) is governed by the Madrid Agreement Concerning the International Registration of Marks (the Madrid Agreement), which concluded in 1891, and the Madrid Protocol Relating to the Madrid Agreement of 1989 (the Madrid Protocol).
The Madrid Protocol allows applicants from member nations to protection for their marks in all countries that are also members of the Madrid Agreement. A mark includes logos, names, words, letters, shapes, colours, images, packaging of goods, patterns etc.
The Madrid System is centred around two main objectives: (i) facilitating the obtaining of protection of mark, and (ii) making the management of the protection easier, as one international registration is akin to multiple national registrations/best trademark lawyers in Delhi.
International Application Process
Before filing for international registration
Any natural person or legal entity which is connected through an industrial or commercial establishment, domicile or nationality with a member nation can apply for international registration.
Before filing for an international application, it is important for the applicant to ensure that they have a trademark application or registration for the mark that they want to register internationally. This is important because to file an international application, the applicant must have a “basic mark”, which is given by the IP Office in the member nation (Office of origin).
Once the applicant has obtained a “basic mark” from the Office of origin, it must file its international registration application with the same Office. The Office of origin would check whether the application meets the requirements for internal registration. Once the requirements are met, the Office of origin, after certifying the application, would forward the application to the WIPO/Trademark registration lawyers in Chandigarh
The form used to file an international application is Form MM2. Alternatively, applicants can use the Madrid e-Filing portal if it is available on the website of the IP Office of origin.
When the Office of origin forwards the application to the WIPO, the WIPO examines the application to ensure that the application is legitimate, fulfils the requirement and is devoid of defects.
Once the application is approved by the WIPO, it registers the mark and publishes the registration in the WIPO International Trademark Gazette. A certificate of registration is issued to the applicant and the application is then forwarded to the IP Offices of each requested member nation.
The IP Offices in the requested contracting nations will also examine the application and check for any conflicts between the mark applied for and registered trademarks in their respective nations.
However, if there are no conflicts or objections, the Office grants trademark protection to the mark/trademark registration lawyers in Delhi
What happens once the trademark is registered internationally?
Once a mark is granted protection in a foreign jurisdiction, it is important to keep track of the trademark. Post-registration, one should ensure the following: that the trademark is used in the grace period, otherwise, it is at risk of losing protection, look out for trademark infringement in the countries where the trademark is registered, and renew the trademark registration.