A brief overview on foreigners applying for trademark application in India

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foreigners applying for trademark application in India

Trademark is a mark that includes a device, name, symbol, words or any representation that represents the brand value of the company. Registration of a trademark will protect its unique position and brand value. To safeguard and empower the position of the design or any graphical representation it is necessary to have a trademark protection Act all across the globe. When the owner finds it necessary to have international protection for a trademark, then the same has to be registered for trademark protection with that specific country. Thus, to avoid duplicity or multiple trademark application with the same graphical representation Madrid Protocol came into effect.

Table of contents 

Introduction on trademark and Madrid protocol

Trademark – Trademark can be any graphical representation of the company or any product which differentiates and sets aside the trademark registered company from others. a trademark is denoted by TM symbol (denotes, the trademark is yet to be registered but comes under the purview of trademark protection, whereas the R symbol symbolizes the trademark as a registered trademark and aggrieved party can sue the infringer.  

Madrid Protocol – WIPO (world Intellectual Property Organization) regulates the Madrid protocol and India being the signatory of the protocol is bound by the rules and regulations of WIPO. Madrid protocol permits foreigners to have a trademark that is owned and operated internationally. Thus in order to protect their trademark from infringement in India can file an application in India for obtaining a trademark registration for protection for India being a participant in WIPO.

Importance of WIPO (world intellectual property organization)

WIPO is a Geneva-based organization that controls intellectual property globally by following Madrid Protocol. This acts as a single-window for registered foreign trademarks to apply for trademark registration in the signatory countries of the protocol. India agreed and became the signatory of the Madrid protocol on 8th July’ 2013 allowing the trademark registration by foreign nationals.

Trademark registration under Madrid Protocol

Once the foreigner who’s willing to apply for trademark registration in India unless for those who has their principal place of business has to fulfil the entire obligation and obtained the trademark from their home country to become eligible for getting their trademark registered in India.

Checklist for registration

  • Trademark application or registration is mandatory in the home country before approaching WIPO for availing registration in India.
  • Any application with regards to the trademark registration has to be made only with WIPO. WIPO in turn notifies the Indian trademark office.
  • Records of the trademark have to be published in the WIPO Gazette.
  • Willing foreign nationals have to fill in TM-1 (general application used for making an application for proposed trademark registration).
  • The registrar will further record and scrutinize the particulars of the applied trademark and take advice from the WIPO on the international registration.
  • When the registrar gets satisfied with the produced documents by the foreign national shall grant permission and protection after advertising such international registration through an advertisement and with no opposition the registrar grants international trademark. With the acceptance or refusal, the WIPO has to be notified in that regard within 18 months of such decision, failing which WIPO will deem that protection has been extended to international trademark.

Importance of Madrid protocol for foreign nationals

The trademark application for foreign individuals is possible but is subjected to an extensive legal obligation and compliances with the trademark registrar. Thus, the foreign nationals with trademark registration in other countries can extend and safeguard their interest globally by Madrid protocol and avail trademark registration in India.

India has 42 classes of classification for trademark registration and the interested foreign country can avail trademark registration under the listed class for more than one product or service in India.

Before availing of the trademark registration in India, it is mandatory for foreign nationals to have the trademark registered in their home country unless the principal place of business is in India.

Every foreign individual willing to have their trademark registered in India should apply through WIPO.

Benefits of Foreigners registering their trademark in India

When a foreign entity applies for the trademark in India under the Madrid protocol the foreign entity or foreigner gets exclusive rights to exploit the Indian market by selling their products or providing services.   

 With registration, the foreigner with the trademark registered in India can protect their usage of the trademark and can sue the third party who infringes the trademark.

Duration of validity

The registered trademark of the foreigner be it an individual or foreign entity that has obtained the trademark shall be valid for ten years and on the expiry of such trademark can be extended for every ten years. On failing which a grace period of six months shall be granted by the Indian trademark office upon the payment of surcharges.

Final words

With the rapid growth of the international business, the company may it be national or foreign national is bound to safeguard their brand value. Thus, in order to improve and globalize the trade Geneva organization introduced WIPO (Madrid Protocol). Madrid protocol allows the foreign nationals to register and safeguard their trademark in all of them or in any one of 193 signatory States to the protocol.

Trademark is an important asset to any company because a mere representation of the logo exhibits commitment and authenticates the product or services by adding value to the services that have been provided by the company among the customer.

Thus, when any trademark registered foreign nationals want to secure their asset’s brand value in India against the possible act of infringement then such foreign companies can approach WIPO and apply to the signatory countries of the Madrid protocol.

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Neelansh Gupta is a dedicated Lawyer and professional having flair for reading & writing to keep himself updated with the latest economical developments. In a short span of 2 years as a professional he has worked on projects related to Drafting, IPR & Corporate laws which have given him diversity in work and a chance to blend his subject knowledge with its real time implementation, thus enhancing his skills.

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