International Trademark Registration: Explained

source: vakilsearch

If you are someone planning to bring your brand into the global market, international trademark registration is essential. It is also necessary if you want to manufacture goods overseas with the intent to sell them. Registration of this mark allows your company to protect its brand name and intellectual property rights in many countries. It is a crucial step as it also helps in gaining consumer trust.

In this guide, you will understand the international trademark registration process, the fees involved, benefits, and more.

There are many types of international trademarks applications available, which you can apply for:

1. Use-Based Application Form

The purpose of this application is to brand commercial goods and services. You have to provide evidence to use this mark, such as an illustration of the mark used in the goods and services and the date stating the first use of the mark. It takes around 12 - 18 months to complete this application process from the filing date.

2. Intent-to-Use Application Form

When you plan to use a trademark for commercial purposes, you can opt for an intent-to-use application form. For this purpose, you must provide the bona fide intention statement for using the mark in commerce but do not need to provide evidence for its actual use. Its application process takes around 24-30 months from the date of registration.

3. Madrid Protocol Application

According to this application, you can file a single application form to protect a trademark in many countries that are associated with Madrid Protocol.

4. Trademark Electronic Application System (TEAS)

TEAS applications are filled out online through USPTO (US Patent and Trademark Office) and help to give legal protection to your mark. Two types of TEAS application forms are available with low registration fees, and you can apply for them easily. They are as follows:

• TEAS Plus Application

In this application, you have to submit the trademark specimen, first usage statement, and details of the list of goods and services. When compared to a traditional form, the application process for this form is faster.

• TEAS RF (Reduced Fee) Application

Compared to the TEAS Plus application, the TEAS RF application is cheaper. You must follow certain restrictions in this application such as receiving mail from USPTO and communicating with them via it.

You need to meet certain requirements for international trademark registration of your brand. For international protection of your goods, you have to be either:

• A resident of the contracting state.
• A contracting state citizen to the Madrid System.
• A legal entity of an effective commercial industry in a contracting state.

The Indian Trademark Office requires the following documents as per Madrid protocol, during the registration process:

• Power of attorney.
• Payment of handling fee.
• An application form.
• Payment of international designation fee to be paid to WIPO (World Intellectual Property Organization).

The Madrid protocol system allows global trademark registrations via a single application. This includes several nations.

Here you will get a detailed explanation of how do you register an international trademark for your company. Following is the step-by-step process that you should carry out:

Step 1: Trademark Research

Search for a unique trademark to ensure that your desired mark is available in the countries where you want it to register. Make sure that there exists no similar trademark to the one chosen by you. You can conduct this search on the World Intellectual Property Organization Global Brand Database. Following are the three factors based on which the trademark is searched:

• Image used in the trademark.
• Text used in the trademark.
• Class of goods and services.

Step 2: Application Form Filling

Before applying for an international trademark, make sure that the selected trademark is registered in the home country. You can file an international trademark registration application under the Madrid System. 

In this system, you need to submit this application to your home country's trademark office. After confirming that there is no error in the application, they will forward it to WIPO Gazette for further analysis. WIPO checks the institutions of every country where you have applied.

Step 3: Trademark Evaluation

After completing the international trademark application process, the next process is examining it. The trademark office will review your application to ensure it meets all the necessary requirements. They also make sure the mark is not conflicting with any pre-existing trademarks.

Step 4: Publication and Opposition

If your international trademark registration application is approved, it will be published in the National Trademark Office. Here any third party can oppose the publication of the mark if they believe that your trademark conflicts with their existing trademark. If no opposition is raised, the trademark will be registered. 

Step 5: Registration Certificate

After the completion of this process, a registration certificate will be provided to you. The registration of an international trademark provides 10-year protection to your brand.

The fees for international trademark registration range between $3000 and $5000, depending on the region or country you are applying for. You also need to pay a maintenance fee of around $500. Though the cost of registering an international trademark might be huge, it will benefit your company in the long run.

Below is a list of benefits of obtaining an international trademark for your company:

• Brand Protection

Registering an international trademark protects the brand from unauthorised use, infringement, and dilution. It gives the owner exclusive rights to use the trademark on the goods or services offered.

• Business Expansion

Through an international trademark registration certificate, you can expand your business by entering a new market and establishing its reputation. Furthermore, this international trademark facilitates partnerships and collaborations with other global business companies.

• Brand Recognition

Registration of an international trademark can help you with brand recognition and thus increases your company’s brand value. It can do so through the legal protection of the trademark in multiple countries. Moreover, this also helps to drive customer trust and loyalty, which ultimately increases the sales and revenue of your company.

• Online Benefit

Having an international trademark also helps in the growth of an e-commerce business. If you want to sell your products internationally online, you can do so through various online marketing platforms. Once your company gets recognition in the online market, your trademark automatically gains popularity. So, try to enrol for this mark as fast as possible so that you can export your products and no one can use a similar design as yours. 

• Cost-Effective

International trademark registration can be cost-effective in the long run, as it provides legal protection to you in multiple countries. If your company operates in various countries, you need to register the trademark separately in each country. With an international trademark, you can avoid such expenses with just one registration application. Thus, it helps to reduce overall expenses like multiple registration fees, legal fees, and administrative costs.

To summarise, carrying an international trademark registration gives protection to your products at a relatively cheaper rate in multiple countries. This registration of a trademark is a crucial step for your business as it helps in gaining consumer trust and increases brand recognition.