By Karan Shukla, Flywork.io Team, Flywork.io.
How does the concept of trademark works internationally? This is one question that many of the businessmen having businesses in more than one country asks. Read on to find out more.
What is a trademark?
The Cornell University defines Trademark as
“A trademark is any word, name, symbol, or design, or any combination thereof, used in commerce to identify and distinguish the goods of one manufacturer or seller from those of another and to indicate the source of the goods.”
Trademark is a symbol, often bearing distinctive imagery and quality, which denotes a business or company, as it’s legal mark. This imagery could be in the form or as a mix of images, texts, numbers, colours; the point being it’s distinctiveness. Use of trademarks can be dated back to the times of the Indus Valley Civilization, where traders used ‘terracotta seals’ to mark their products, so as to make it easy for them to differentiate between each others’ goods. The trademark found it’s way to the world with the vast extent of merchant navy in the early 18th century 1 and was slowly embossed within the colonies.
The opening up of International Markets and the liberalisation of International Trade made it all the more important to register a trademark internationally. According to the World Intellectual Property Organization (WIPTO), more than 4 million new trademarks2 are registered all around the world, every year. Emerging markets such as India and China contribute to over 50 percent of them. A large number of trademarks present internationally makes it very difficult for an enterprise to enquire about every single trademark infringement. It is impossible to single out an infringement, especially if the country is not native to the owners of the trademark or if the trademark is not very widely known.
Every single infringement of a trademark, however minute it may be, is a direct attack on a brand’s goodwill and it’s market presence. Even if the brand can not single out every trademark infringement, it can still stamp it’s legal authority by getting a trademark registered. A registered trademark becomes legally binding and thus serves as a caveat, deterring it’s misuse and/or infringement.
International Trademark and WIPTO
The World Intellectual Property Organisation is a specialized agency of the United Nations. It was formed so as to provide for the protection of Intellectual Property Rights across the World. It was under the umbrella of the WIPTO that the Madrid Protocol was formulated in 1989.
The Madrid Protocol3 formulated the process of obtaining a Trademark in over 90 countries, at once. The system makes it possible to protect a mark in a large number of countries by obtaining an international registration that has effect in each of the designated Contracting Parties. The Madrid system is a convenient and hands-on solution for registering trademarks worldwide. The applicant can just file a single set of application and get the mark registered in upto 124 states around the world. It makes it convenient to modify, expand or renew a global trademark portfolio through a single centralized system4.
Ways to register a trademark globally
• Single individual registration method
The applicant for the trademark must visit the registration offices, either by himself or through an attorney, in all the states, he wishes to register his trademark. This is usually done by big brands, who have a lot of presence of teams for the same purpose and cannot afford to lose brand identity. The process is usually the same in all countries. It usually includes an application to the registrar or notary, getting a mark approved and the payment of registration charges.
• Madrid System
The Madrid system is an international solution for the registration and management of trademarks worldwide. Under this system, the applicants can submit a single application to protect their mark in the states who have ratified the Madrid Agreement, (currently 113 in number). The applicant can apply for international trademark protection by filing an MM2 form, readily available on WIPO website5. After the due process, the applicant has to submit a copy of the same to their local Registrar/Notary. There is a processing fee for registering a trademark with the WIPO, but it’s considerably less than filing individual applications within each country.
Legal Protection after registration
A trademark registration –
1. Provides Prima facie evidence of ownership and validity
2. Provides Legal protection in a country
3. Deters others from using the same or almost same mark
4. Provides Legal grounds for a suit of infringement of trademark to be brought in case of a dispute
5. Is a caveat against misuse or defamation of a brand name or trademark
1. 18th century marked the start of merchant relations between the West and the East and started a trade war between many European Nations.
2. 52 thousand of these new trademarks are registered under the WIPO
3. The Madrid System for the International Registration of Marks is governed by the Madrid Agreement, concluded in 1891.
4. Sometimes contracting states refuse to register the mark under the Madrid System.