Trademark registration is territorial in nature. A separate Trademark application has to be filed in each country of your choice.
If you plan to sell your goods / services internationally, it is highly essential to register your trademarks in those countries. Prima Facie in Trademark Registration is First to File or First to Use (Few countries adopt this rule). Therefore, it is essential to register your trademarks in each country your company considers to be a potential market. A national trademark registration does not enforce rights beyond the border to the owner of the trademark.
Most companies expanding into other countries often realize the value of registering their trademarks abroad once it is too late, that is, once they are faced with counterfeiters/imitators or once they are accused of infringing the rights of others. The risks of doing so are very high and the consequences may be extremely costly and detrimental to a company’s entire business and export strategy. It can be a severe financial liability to invest in a brand, promote it in the local market, then find that the brand cannot be registered and used internationally and have to finally abandon that investment.
- Registering a trademark globally renders the company an exclusive right to commercialize its products in those markets.
- This not only provides a solid foundation to stop counterfeiters but also ensures that the company enjoys exclusive rights over what is one of its most valuable business assets would be Brand.
- Registering a trademark globally also provides the opportunity to license the trademark to others or may be the basis for a company’s franchising or merchandising strategy.
Thus, the benefits of international registration and protection of one’s trademark clearly outweigh the costs of such registration.
International Application under Madrid Protocol India has joined the Madrid protocol with effect from 8th July 2013. The Madrid system for the international registration of trademarks provides one single and cost-effective procedure for the registration of a mark in several territories.
At present, there are 91 countries which are members of the Madrid protocol. The following link shows the members of the Madrid system:
Advantages of filing an International Application under Madrid protocol
- Lower costs compared to individual foreign filings.
- Managing renewals, change in address, change in ownership is easier and more cost-effective.
- Additional countries may be designated at a later stage.