Trademark like any other form of Intellectual property is jurisdictional. This means that an Applicant has to file their Trademark in all the jurisdictions that they are interested in providing their services or sell their goods. If they do not, they may be infringing on any third parties rights, who may have Trademark rights in that jurisdiction for the particular mark or alternatively not be able to enforce their rights in that particular jurisdiction when a third party is infringing on their rights. As one may know that simply the common law rights in certain jurisdictions alone are not sufficient to protect oneself. It is well established that having trademark rights in a mark or a brand helps the business owner ascertain more rights as against simply relying on the common law rights of passing off that has accrued by way of use of the marks. Therefore, it is important to file the marks in all jurisdiction one might be interested in expanding to.
We at Singhwal have the experience of filing Trademark across the world. Both ways of filing including an Individual Application in a particular jurisdiction as well as via the Madrid Protocol route. Both the routes have their own pros and cons. Madrid gives a way to file application for multiple jurisdictions in from a single window and you are lucky enough not to receive an objection from any of the jurisdiction, then you are not even required to engage any local attorney’s in a particular jurisdiction where the objection is raised, to overcome the objections. However, on the flip side the Madrid application is dependent on a base application and if the base application’s prosecution is at issue, than it may jeopardise the Madrid request in each of the countries with whose respect an application was filed.As far as the individual applications are concerned, they help to keep the applications freely moving independently and may provide a privilege to get a grant in some jurisdiction quite earlier, however it is costlier, as a local attorney is required at filing stage itself, rather than at the prosecution stage. Hence, there is no one way to say, which is the better route and the strategy changes with each individual case and requirements.
While filing internationally we connect with our foreign associates whom we have developed a close working relationship over the years and provide the best services to our clients to work internationally. We give the best solutions to our clients who intend to file internationally in just one jurisdiction apart from India, by directly filing with the country.
We do International Trademark Filing via Madrid route and for prosecution which is country specific we have associates and partners in major countries. Our Trademark Attorneys are well versed as well as highly proficient with the international filing system which makes registering and managing marks worldwide much easier. Through Madrid route, by designating multiple countries at a go, and filing in one language, along with fee paid in one currency, for registration, designating the countries in which protection of the mark is sought.
As The Madrid System is Single Stop Solution for International Trademark Registration and Management of Trademarks throughout the globe. In this system we need to file one application, in one language, and pay one set of fees in one currency, designating the countries in which we desire to protect the trademark. The Madrid system covers territories of up to 95 members or organization which are contracting parties to the System. This is a centralized system by the International Bureau of the World Intellectual Property Organization, WIPO) for obtaining trademark registrations across jurisdictions.
This makes Madrid system comparable to Patent Cooperation Treaty System (PCT). The PCT is used for acquiring Patent Rights, however in PCT one cannot get a single window to enter in any country without filing a separate application in a particular jurisdiction. Along with filing the Madrid system also facilitates the renewal process of trademark. The trademark term is for 10 years from the filing so before expiry of the term the renewal becomes essential for keeping the protection and rights intact.
We at Singhwal first file a basic application which is mandatory for filing internationally and then based on that we file a single international application which is in single language. The international application is presented to the WIPO International Bureau through the Office of origin which is India if the basic application is filed in India. The Madrid application should include a copy of the mark similar to that of basic application, list of goods and services along with classification for which the protection is sought, the designated countries, and the prescribed fees. The classification should be according to International Classification of Goods and Services.
The fees includes the handling charge which is charged by the office of origin and the international filing fees. The international filing fees is paid in Swiss franc currency which includes the Basic fee, A complementary fee or an individual fees as the case may be according to the Contracting Party’s wishes. A supplementary fee for each class of goods and services beyond the third class; no supplementary fee is payable, however, where all the designations are ones in which an individual fee has to be paid.
The major countries are covered by the Madrid system like filing in European Union, Asian Countries, Middle East Countries, African Intellectual Property Organization (OAPI), and United States of America. The other countries which are not covered like Kuwait, UAE, Qatar, Yemen, Jordan, Lebanon, Iran, Brunei Darussalam, Indonesia, Lao PDR, Malaysia, Myanmar, Thailand, we have associates and partners to take the filing as well as prosecution forward at a competitive pricing and without complication.
India is now compliant with the Madrid protocol and we can make applications via E filing as well for the Madrid protocol. The base Application in that event will be a Trademark Application filed in India, since the applications abroad are dependent on the base application, it is important to file the base application with all the due diligence that it may entail. For instance, an Applicant in India would like to Trademark their logo in India, United States and with the European Union, after filing the base application, via the Madrid route the other two applications may be filed from India itself. Wherein the fees for both these jurisdictions have to be paid along with the filing. Once the application is filed with the Indian Patent Office, the Attorney will receive a notification of filing and a confirmation with the link to pay the fees. Once the fees is paid, the application will be Examined. You may receive a provisional refusal from one jurisdiction and have a smooth prosecution in the other. In circumstances where the provisional refusal requests only for simple changes which are provisional and the objections are not based on the substantive law, even the same may be corrected by the Attorney themselves. However, when there is a question of the substantive law and there are marks which are cited by the Examiner as a part of the provisional refusal, then in those instances, there is a need for a local attorney. Even though that may be the case, this is still cost effective as the Applicant saves up on the professional fees of the local attorney in a different jurisdiction.
Though one may consider filing via the Madrid route, one essential step to not forego is to perform a Trademark search before filing the Application in the respective jurisdictions. This will save a lot of time, money and efforts as the Applicant will be aware of the objections that one may face down the line in prosecution of the Application in a particular jurisdiction and accordingly take an informed decision as to whether they would like to proceed with the registration of a mark as a brand or not.
As a rule, the date of the applications in the individual countries is same as that of the International application filed based on the base application. This is the general rule unless and until there is an irregularity with the application that has been filed. In the event there are any irregularities, the Indian Trademark office will convey the same to the Applicant before processing it and sending the same forward to the World Intellectual Property Organization.
Similar to that of a PCT application’s national phase entry for patents, the application filed via the Madrid route will be considered as though they have been filed with the Designated contracting party directly. This is the benefit that accrues out of filing through this route. The term for which the Trademark is valid is indefinite, however it needs to be renewed every 10 years. The first ten years start from the date of the international registration.
An important aspect is that in the event, at a later point of time, after filing the initial International application designation certain countries, you may then proceed to add new designations and pay the fees for the said new designated countries, for the application to be processed. The date of this application is that of the date on which the World Intellectual Property Organization receives the application.
We have performed numerous international filing and have worked across jurisdictions. We consult with local attorneys on a need basis having an immense experience in prosecuting trademark applications in their respective jurisdictions. We do so on a need basis depending on the request of an Applicant and have a wide network of Attorney’s across the globe. We would be happy to assist our clients in filing and prosecuting their trademark application internationally. We aim at providing quality services which are also cost effective to our clients, not only from our end but also from the our foreign associates.