Trademark registration is territorial in nature. Separate applications need to be filed in each country where you wish to register your trademark.

If you plan to sell and market internationally, it is essential to register your trademarks in those countries. Usually, the party who first registers a mark owns it. Therefore, it is significant to register your trademarks in each country your company considers to be a potential and key market. A national trademark registration stops at the border and does not afford rights to the owner of the trademark outside the country in which it is registered.

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.

1. Registering a trademark abroad renders the company an exclusive right to commercialize its products in those markets.

2. This not only provides a solid foundation to stop counterfeiters but also ensures that the company enjoys exclusive rights over what may be one of its most valuable business assets.

3. Registering a trademark abroad 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:

In order to file an international application under the Madrid protocol, there should be a corresponding trademark application filed in India.

In a single international application under the Madrid protocol, several countries may be designated which are members of this system. The fees will depend based on the number of classes and countries designated.

The fees can be calculated using the online tool by choosing Office of origin as India, selecting the number of classes and specifying whether the mark is in colour:

http://www.wipo.int/madrid/en/fees/calculator.jsp

In addition, a handling fee of Rs. 2,000/- is payable to the Indian Trade Mark Registry.

Upon filing the application, the mark is examined by each designated member country where registration is sought and then proceeds to registration.

An international registration under Madrid protocol is however dependent on the corresponding Indian application for a period of five years from the date of international application.

If you wish to obtain registration in a country which is not a member of the Madrid protocol, separate national trademark application has to be filed directly in the respective country.

Advantages of filing an International Application under Madrid protocol

1. Lower costs compared to individual foreign filings

2. Managing renewals, change in address, change in ownership is easier and more cost-effective

3. Additional countries may be designated at a later stage