Registering Trademarks Internationally
By Shruti Agrawal July 15, 2016
Trademarks help an individual in protecting its brand identity. One can register its name in form of a word, slogan, phrase, symbol, design, or combination of any of these methods. In this blog, I have discussed how these trademarks can be registered internationally.
Difference between trademarks, patent and copyrights
Trademark is a brand name which is used to differentiate one’s product and service from other similar products or services. For example Starbucks is a brand which differentiate its coffee from other coffee available in the market.
Patents are rights given to the innovators and inventors, by the government, to protect their inventions, machineries, devices, processes, etc. For example apple sued Samsung for infringing its patent rights by designing similar smartphones and tablet computers. (Apple Inc. v. Samsung Electronics Co.)
Copyrights are rights provided to artists to protect their creativity. These rights can be used to protect computer software, movie, music, books, painting, etc. For example in Cariou v. Prince 714 F. 3d 694 (2d Cir. 2013) the court ruled that there is a difference between inspiration and imitation. The court ruled that there should be sufficient difference in the original and inspired work to avoid infringement of copyright.
Importance of registering the trademark internationally
Due to increase in global trade, it has become very crucial to protect one’s brand name not only in domestic market but also in foreign market. Registering in international market has following benefits-
- Registration of trademark in international market helps the company to have a special right to endorse its product in that market.
- Along with ensuring special rights, it helps company to stop imitators from faking their products. It helps company to protect its goodwill from any damages caused by the fake products.
- It also creates further trade options like licensing and franchising. The company can license out its trademark to create different branches.
Thus, registering trademarks internationally is a very effective and efficient practice which is very important to conduct trade internationally.
How to decide on the trademark
Before registering the trademark one needs to decide what will be its trademark. It is very important to ensure that the trademark company wants is not similar to anyone else’s trademark. Following are the points one has to be cautious about while deciding its trademark-
- The companies should run some clearance that their trademark does not infringe anyone else’s trademark rights. They need to make sure that their trade mark is not very similar in design, words or listening similar to other trademarks. In India, one can search already existing trademarks on http://ipindiaonline.gov.in/tmrpublicsearch/frmmain.aspx.
- The companies might want to check that their trademark does not have any negative connotation in local language. For example- terimakassai in Malaysian language means thank you however in Hindi teri ma kasi is consider as an abuse. Thus, the companies should make sure that their trademark is not offensive in any local language.
- The companies should also check if their trademark reflects their business, as deceptive marks are not accepted by USPTO (US Patent and Trademark Office.) They should also make sure if they are planning to expand their business and are planning to incorporate new sectors in their business then they can use the same trademark. For example, Reliance have different sectors like reliance petrol pump, reliance mart, reliance fresh, reliance trend, etc. All these sectors have the same trademark of reliance. Thus, while deciding the trademark the company needs to take into account its future projects.
- The company need to be cautious about cyber squatters. To protect oneself from such an abuse, one can name their domain with CTLDs (Country Top Level Domains) such as.fr (France), .uk (United Kingdom), etc.
- Finally one cannot have a generic name as a brand name. Trademarks are to secure ones specific identity. A generic name would fail the purpose of registering trademark.
How to register trademark internationally
After deciding the trademark one needs to, first register the trademark in the domestic market. One can go to the country patent and trademark office or can appoint a third party like attorney to register their trademarks. For registering trademark in India, one visit http://www.ipindia.nic.in/tmr_new/ for more details.
After getting one’s trademark registered domestically one needs to decide what other countries one wants to register its trademark in. One has to look into various protection provided by the respective countries. They also have to check various trade agreement entered by their nation with other countries.
One can choose to go for multilateral registration to save time. CMT (Community Trademark) is the agency which allows the applicant to register its trademark throughout EU. However, if the trademark is disqualified in any of the countries, the entire application would be rejected.
International Registration can also be made through Madrid System, which allows one to register in 96 countries in one go. However, one has to pay fees of all the individual countries and each country has the right to reject the trademark.
ARIPO (African Regional Intellectual Property Organization), is also one of the multilateral registration organization which allows an individual to register its trademark in several English-speaking African nations.
After deciding the countries or multilateral registration organization, one has to approach the correct office or organization to register its trademark. For example, International Bureau of the World Intellectual Property Organization (WIPO) is responsible for registering trademarks through Madrid System. Or one can choose to approach the individual PTO of the country. The list of the offices of respective country is given at http://www.wipo.int/directory/en/urls.jsp.
One also has to pay registration fees for getting their trademark registered. This fees can be calculated at http://www.wipo.int/madrid/en/fees/calculator.jsp. After paying the fees one will get a certificate of registration.
However one has to maintain that trademark. Generally non-usage of trademark for 5 continuous years will make it ineffective. Thus, the individual is required to maintain its trademark by using it in the registered area. If ones trademark right is infringed he needs to take a swift action by filing a suit or by writing desist letters. One also have to be cautious about the renewal policy. The period for trademark is generally for 10 years and it has to be renewed before it is expired.
In the present global market it is not sufficient to protect ones product nationally. An individual needs to make sure that their rights are not infringed in the international market. Thus, when one is planning to enter into export business it needs to make sure that its product is ensured in that country where it is exported. One needs to be cautious while choosing a trademark, getting it registered and while maintaining it.
- What kinds of trademarks cannot be registered?, (http://www.registeringatrademark.com/cannot-register.shtml) (last seen on 12th July, 2016)
- How is trademark protection different from copyright and patent protection?, (http://www.registeringatrademark.com/trademark-vs-copyright-patent.shtml) (last seen on 12th July, 2016)
- Josh Braunstein, How to Protect Your Trademark Internationally, (http://www.businessnewsdaily.com/2838-how-to-protect-your-trademark-internationally.html) (last seen on 12th July, 2016)
- Clinton M. Sandvick, J.D., How to Register a Trademark Internationally, (http://www.wikihow.com/Register-a-Trademark-Internationally) (last seen on 12th July, 2016)
- Trademark Fees (Global), (http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkFees(Global)FactSheet.aspx) (last seen on 12th July, 2016)
- International Trademark Registration, (http://www.lrswami.com/page/foreign-trademark-registration) (last seen on 12th July, 2016)
- Picture Credits : http://www.wikihow.com/Register-a-Trademark-Internationally
Author- Shruti Agrawal (Jindal Global Law School) (4th year)
tradmarks , international registration , procedure , multilateral registration , deciding trademark , Difference between trademarks , patent and copyrights , Importance of registering the trademark internationally , How to register trademark internationally