Introduction to International Trademark Registration

International trademark registration under the Madrid Agreement and Protocol allows businesses to protect their trademarks in over 120 countries with a single application. Managed by WIPO (World Intellectual Property Organization), this process simplifies multi-country registration.

The process starts with a trademark search to confirm availability. Applications are submitted via the applicant’s local office—such as India’s Trademark Registry—which forwards them to WIPO. After review, WIPO works with designated countries to ensure local compliance. Once approved, an International Registration Certificate is issued, granting global protection.

This system is cost-effective and time-saving, helping prevent misuse and boosting brand value. However, the "central attack" rule applies—if the home country rejects the mark, other registrations may also fail. For Indian applicants, compliance with both Indian and global laws is crucial. Registration is valid for 10 years and can be renewed.

At Sperso Filings, we assist you through the entire process—filing, handling objections, renewals, and ensuring your brand stays protected internationally.

What is International Trademark Registration?

International trademark registration allows companies to secure their trademark rights in multiple countries through a single application under the Madrid Protocol. This simplifies protection against misuse by foreign entities.

Applicants file via their local office (e.g., India’s Trademark Registry) following the Nice Classification system. Once registered, the trademark gains protection in all designated countries, and its status can be monitored via the WIPO Gazette and Madrid Monitor.

A valid registration enhances brand recognition, exclusivity, and legal rights in global markets. This is vital for expanding businesses and preventing unauthorized use by others.

Importance of International Trademark Registration

Global trademark registration offers strong protection and prevents infringement in foreign markets. It saves time and cost by eliminating the need for separate applications in each country.

Such registration improves brand value, customer trust, and market credibility, allowing businesses to focus on growth without legal worries. It also ensures easier handling of disputes and enforcement of rights across multiple jurisdictions.

For brands looking to expand globally, international registration is an essential investment in long-term success.

Understanding International Trademark Registration

International trademark registration under the Madrid System lets trademark owners protect their rights in multiple countries through a single application. Managed by WIPO (World Intellectual Property Organization), this process saves time and cost compared to filing in each country separately. Fees are paid in Swiss francs and depend on the number of classes selected.

The Country of Origin determines where the application starts, and WIPO works with designated countries to ensure local compliance. Once approved, the registration offers strong international protection, helping prevent unauthorized use abroad.

The WIPO Gazette allows owners to monitor published marks and track possible infringements. This system is ideal for businesses expanding globally, offering wide-reaching brand security.

Difference Between National and International Trademarks

1. Scope of Protection
   
   • National Trademark: Protects the brand only within the country where it is registered.
   • International Trademark: Protects the brand in multiple countries under one application via the Madrid System.
2. Filing Procedure
   
   • National Trademark: Filed directly with the trademark office of the specific country.
   • International Trademark: Filed through the home country's trademark office and processed via WIPO for global protection.
3. Cost Effectiveness
   
   • National Trademark: More affordable for single-country protection but costly if filing in multiple countries individually.
   • International Trademark: Cost-effective for securing protection in several countries with a single application.
4. Jurisdiction
   
   • National Trademark: Valid and enforceable only in the country where it is registered.
   • International Trademark: Covers multiple member countries of the Madrid System based on the applicant’s selection.
5. Application Management
   
   • National Trademark: Handled separately in each country’s IP office.
   • International Trademark: Managed centrally through WIPO, making tracking and renewal easier.

Benefits of International Trademark Registration

• Multi-country protection via a single application
• Simplified process through WIPO
• 10-year protection, renewable
• Access to Global Brand Database for easy trademark searches
• Centralized management of international trademarks

Who Can Apply for International Trademark Registration?

• Individuals or businesses with a national trademark registration in a Madrid System member country
• Small businesses or large corporations seeking global brand protection
• Trademark owners aiming to simplify international filings and safeguard brands worldwide

Legal Framework for International Trademark Registration

The legal framework for international trademark registration is built on a combination of treaties, agreements, and national IP laws that ensure global protection of trademarks. The Madrid System, which includes the Madrid Agreement (1891) and the Madrid Protocol (1989), forms the foundation of this framework. This system is administered by the World Intellectual Property Organization (WIPO), ensuring that businesses can secure trademark rights in multiple countries through a single application.

Madrid Agreement (1891) and Madrid Protocol (1989): An Overview

1. Madrid Agreement (1891):
   • First treaty that enabled trademark owners to register their marks in several countries using a single international registration.
   • Required the trademark to be registered in the home country before applying internationally.
2. Madrid Protocol (1989):
   • Improved the system by allowing applications based on either a pending or registered national application.
   • Offered flexibility such as differing fees based on chosen countries and permitted additional countries to be added post-filing.
   • Made the process accessible in three languages: English, French, and Spanish.

Key Differences Between Madrid Agreement and Madrid Protocol

• The Madrid Agreement requires prior national registration; the Protocol allows filing based on pending applications.
• The Agreement uses only French; the Protocol supports English, French, and Spanish.
• Fees under the Agreement are uniform, whereas under the Protocol, fees vary by country.
• The Protocol allows countries to be added after filing, but the Agreement does not.
• Countries can join either or both systems under the Protocol; under the Agreement, joining the system was mandatory.

Governing Bodies and Jurisdictions

• The World Intellectual Property Organization (WIPO) manages the Madrid System.
• WIPO’s International Bureau plays a key role by handling:
  • Application processing
  • Fee collection
  • Communication between applicants and national IP offices
  • Publication of international marks in the WIPO Gazette

Influence of GATT-TRIPS/WTO

• The TRIPS Agreement (under the WTO) sets global minimum standards for trademark protection, ensuring consistency across member countries.
• TRIPS harmonizes trademark laws worldwide and strengthens enforcement measures for international trademarks.

Participation of Member States

• As of 2023, the Madrid System includes 115 member states, representing 131 countries.
• Major economies like the United States, European Union, India, China, and Japan are part of the system.
• Businesses can secure protection across these countries using a single international application.

Role of National vs. International IP Laws

1. National IP Laws:
   • Provide protection within a specific country.
   • Governed by each country’s local laws and courts.
   • Separate applications required for each nation not part of the Madrid System.
2. International IP Laws (Madrid System):
   • Provide protection across multiple countries using one application.
   • Governed by international treaties like the Madrid Protocol.
   • Enforcement still depends on national laws in each designated country.

Impact of International Treaties

• Treaties such as the Madrid Protocol and TRIPS have simplified international trademark registration.
• They ensure that businesses meet standardized rules for protection across different jurisdictions.
• These agreements reduce time, effort, and costs involved in securing global trademark rights.

Eligibility and Requirements for International Trademark Registration

International trademark registration under the Madrid System allows businesses and individuals to protect their trademarks in multiple countries through a single application. However, applicants must meet certain eligibility criteria and fulfill specific documentation requirements to file successfully.

General Eligibility Criteria

• Have a valid national trademark application or registration in a member country of the Madrid System.
• Be a national of, have a domicile in, or maintain a real and effective industrial or commercial establishment in a country that is a member of the Madrid Union.

Jurisdiction-Specific Requirements

• United States (US): The applicant must have filed a national trademark application or already own a registered trademark with the USPTO.
• European Union (EU): Applicants can base their international registration on an existing EUTM or a pending application.
• India: Indian nationals or businesses located in India can apply through the Indian Trademark Office, provided they have filed or registered a national trademark.

Required Documentation

• Application Form (MM2): Submitted via the applicant’s national IP office.
• Owner Information: Name, address, and nationality or country of domicile.
• Trademark Details: Clear description and visual representation of the trademark.
• List of Goods and Services: As per the Nice Classification System.

Language Requirements

The application must be completed in English, French, or Spanish, which are the official languages of the Madrid System.

It is essential to ensure that the application also meets any language requirements set by the national IP office handling the initial filing.

Summary

• You must hold a national application or registration.
• You must meet country-specific eligibility standards.
• You need to submit the correct form and documents via your national IP office.
• Your application must comply with language and classification rules.

Documents Required for International Trademark Registration

• Identity Proof
• Address Proof
• Business Registration Documents
• Form MM2
• Copy of Trademark
• Domestic Trademark Certificate

The International Trademark Registration Process

1. Trademark Search
2. Filing the Application
3. WIPO Examination
4. National Office Examination
5. Opposition and Appeals
6. Grant of Protection

International Trademark Registration Fees

• Basic Application Fee: 700 CHF
• Complementary Fee: ~100 CHF per country
• Supplementary Fee: ~100 CHF for each extra class
• Maintenance Fee: ~$500 annually
• Individual Country Fees: Varies by jurisdiction
• Legal/Attorney Fees: Optional

Renewal of International Trademark Registration

Renewal Process and Timeline

Renew every 10 years. Missing the deadline may result in losing rights.

Costs Involved in Renewal

Comparable to initial registration costs, based on the number of countries covered.

Importance of Timely Renewal

Prevents loss of trademark rights, maintaining brand protection in global markets.

Challenges and Pitfalls in International Trademark Registration

• Central Attack Risk: Cancellation of the basic national registration can impact the international application.
• Infringements and Disputes: Must manage opposition across multiple jurisdictions.
• Rejections and Cancellations: Be prepared for objections in individual countries.

Special Considerations for Indian Businesses

1. Trademark Search
2. Application Filing
3. Fee Payment
4. Application Processing
5. Submission to WIPO
6. WIPO Registration
7. Certificate Issuance
8. Notification to Countries
9. Protection Granted

Compliance with Indian and Madrid Protocol Laws

Indian applicants must meet both Indian legal standards and Madrid Protocol requirements to avoid rejection.

Legal Differences Across Jurisdictions

Understand legal variations between Indian and international systems for seamless registration.

Assignment, Transfer, and Modifications

• Transfer/Assignment: Ownership can be transferred with proper documentation.
• Modifications: Must be recorded to reflect changes like mergers.

Countries Recognizing International Trademarks

The Madrid Protocol covers over 130 countries including the US, EU, China, and India, enabling broad protection with a single filing.

Strategic Markets: Choose based on business expansion goals for maximum coverage.

Conclusion

Choosing Sperso Filings for international trademark registration ensures expert assistance throughout the process—from application to post-registration updates. With specialized knowledge in global trademark laws, Sperso Filings offers personalized service, helping businesses secure and protect their brand across borders with confidence.