Considerations For Obtaining Foreign Trademark Registration

Anything which differentiates a product or a service of a company from the products and services of other companies in the market is usually known as a trademark or a service mark. The term “Trademark” is generally used in distinguishing the goods or products of a specific company from other companies; on the other hand, the term “Service Mark” is usually used in differentiating the service of any service provider from the services of other service providers in the same marketplace. Hence, a trademark or service mark is a particular mark, a word, a signature, any diagram or logo, or any other object, which can undoubtedly differentiate that product or service of a company in a certain country or international jurisdiction. A person or a company can safeguard their trademark in other countries by registering it, hence, in this article, we will talk about things to remember before getting a foreign Trademark registration.

Things You Should Consider Before Getting Foreign Trademark Registration

As per WIPO, almost four million trademark applications are filed annually around the world. In the U.S., the trademark rights are provided using a mark and it is obtained by getting a Federal registration with the United States Patent and Trademark Office (USPTO). Most U.S. brand owners do not know that their trademark rights finish at the U.S. border. Thus, to get protection outside the U.S., the trademark rights need to be obtained independently among the other territories. Furthermore, the right of foreign trademark registrations and the basis for violation of trademark vary in different countries. Hence, companies that have the potential of growing outside the U.S. are required to plan activities and get protection for a trademark in foreign territories that is applicable for their specific industries. Because more and more brands are expanding their businesses over the seas, it is necessary to understand the details of foreign trademark registration. The significant points that you should remember while applying for foreign trademark registration are given stated here.

1) Register the Trademark in India

If you want to apply for foreign trademark registrations, you must register your trademark in India first and this can be done using the U.S. Patent and Trademark Office (USPTO). The international trademark registration application can be directly done using the website of USPTO. The foreign trademark registration in the U.S. will provide a stronger basis for registering the trademark in other countries.

2) Work With Carefulness 

It’s necessary to be on well-known terms with how this method works in one specific country related to the U.S. with the cause of protecting the trademark in different countries. It’s necessary to learn and acquaint yourself with the trademark provisions and other guidelines of the countries where foreign trademark registration can be applied for. Some of the great research assets are The International Trade Administration and WIPO.

3) Use the Madrid System

The Madrid System is a great system for foreign trademark registrations and managing the trademark around the world. As per the Madrid Agreement, the applicants that apply for foreign trademark registration can publish just one application to safeguard their business in a federation of countries. The Madrid Union is a group of various countries that acknowledges these international trademarks. If you want to file the MM2 form, which can be found on the WIPO website. After filing it online, a hard copy can be provided to the office of your country. As of now, 113 countries recognize the trademark provided by the Madrid Agreement, which includes various big countries like Australia, Italy, France, China, and the European Union. The applicant can pick specific countries or he can also choose to safeguard his trademark in all of the 113 countries. The applicant must pay the processing fee for foreign trademark registration to the WIPO, which is less costly as compared to the filing of an individual application in different countries.

4) Hire A Lawyer

If the applicant wants international trademark registrations in the countries that do not fall under the Madrid Agreement, because there are some countries not protected according to the Madrid Agreement like Canada, Saudi Arabia, and South Africa, the applicant can seek guidance from a lawyer of that country in which he wants to register a trademark. As per the suggestion of USPTO, a lawyer can be found using the International Trademark Association.

5) Think About Foreign Translations

The applicants must think about the foreign translations of the words carefully if they are applying for foreign trademark registrations in another language. Hence, the applicant must make sure and consider the foreign translation to prevent any kind of mistake of whatever slogan or word the applicant is using in a certain country.

6) Don’t Delay

The wisest decision is that you should not waste time filing trademark registration applications, especially if you want to do business overseas in short term.

7) Necessary Fields for Getting Foreign Trademark Registration

The major requirements of getting foreign trademark registration in India are: The applicant has to be an Indian or be living in India for a year or must have a real and valid business establishment in India. The applicant should have an Indian national trademark application or have a trademark registration with Indian Trade Marks Registry. Thus, this national trademark application or registration can be used as a reference at the time of applying for an international application. The international application shall have a similar trademark, list of goods and services stated in the national trademark application. In the international application, the applicant has to pick one or multiple member countries from the Madrid Protocol, in which the applicant wants to safeguard his trademark.

8) Applying For Trademark Registration in India Online

Before talking about that, let’s talk about a few basic things first, just to clear the concept.

What are the things that can be trademarked?

If you trademark something, it helps you to invest in its branding and make sure that its goods and services have different branding in the marketplace. Things that can be trademarked are Numbers, words, names, images, brands, sounds, and logos. But if we are talking about images, the brand logo of Adidas that shows three ascending stripes is trademarked for instance. It’s smart to apply for the Trademark as an entity because, if you apply as a company, the Trademark will become void if someone changes the name of the company.

Various Trademark symbols

There are various trademark symbols that the Controller General of Patents uses. These symbols show the condition of your trademark registration.

TM symbol

A TM symbol is the Trademark symbol that is used for a product. Anyone can use the trademark symbol “TM” till the Trademark is not registered, while the application is still pending so that the public can be aware of this brand.

SM Symbol

SM means the Service mark that we have talked about earlier in the article, it is used for services like providing healthcare treatment.

R symbol 

R symbol can be by a business entity used when the Trademark is finally registered, and the Registrar has provided the Certificate of Registration of its name.

Collective Mark 

It is used to make the public aware of specific distinctive characteristics of a service or a product that are used to represent a group collectively. Anyone who is trying to collectively safeguard the same goods and services can use this mark. An association or a public institution can hold this mark too. Usually, the standards of the products are set by the regulatory authority that owns the mark. A collective mark that you might be familiar with is the designation of Chartered Accountant in India.

Certification Mark 

It shows the birth of the product, its quality material, or other specific details provided by the owner. The main reason for the certification mark is to showcase the quality of a product to the customers. The Certification mark is also used for the cause of raising the standard of the product in the eyes of the consumers by showing that it has passed several tests on quality. Usually, electronics, packaged foods, and toys have Certification marks.

Shape Mark 

It is used to safeguard the product’s shape so that the customers can feel the shape of a product is connected with a certain manufacturer and then always try to buy the same product. The certain shape of the product is registered after it gets acknowledgment to have its unusual shapes like the bottles of Coco cola or Fanta.

Pattern Mark 

It is specifically used for those products that have particular design patterns that provide the product its unique personality. If you want to register a pattern, the pattern must be exceptional and exclusive to that product.

Sound Mark 

It is used for a sound that is connected with a service or a product that is provided or sold by a certain supplier. The customers must acknowledge that sound while listening to it to get registration in the name of a sound mark. It is a sound prompt that can be usually heard at the start or the end of an advertisement, like the popular sound of IPL.

The Procedure Of Online Trademark Registration

Trademark a “Brand Name”

First of all, you are required to choose a stunning, catchy, and exciting brand name. The name has to be attractive to attract the consumers and also be different from other brand names as the other common names are registered already.

Fill the Trademark Application that you can find on the website

You have to publish the documents mentioned down below while filing the Trademark registration application: Business Registration Proof:

1. The documents which you have to publish are different as per the type of business.
2. In Sole Proprietorship, you have to submit the ID proof of the proprietor and proof of address.
3. In the case of a registered company, you have to submit the address proof of the Company, a soft copy of the Trademark, proof of the claim of the advanced mark that is used in other countries, and the power of a lawyer that is signed by the applicant.

Application Of Brand Name Registration

The Trademark Registration can be done using two methods, either you can register it manually or by online methods. Since most people want to do it by online methods we will talk about that. After all the documents have been verified by the registrar, you will get the receipt of acceptance. Now, you can use the Trademark TM symbol. Though if your Brand Name does not get accepted because of non-approval of name, you can apply again using the SPICe Plus form without paying any extra charges.

Verification of the procedure of the Brand Name Application

After the submission of all the documents and verification, the registrar will now see if your Brand name obeys the existing law. Your brand name cannot be insulting, dirty, and the same as other brand names

Issuance Of The Brand name In The Trademarks Journal Of India

After everything is done, the registrar will publish your Brand name in the Trademark Journal of India. After the name has been published, there cannot be any objection for at least three months from the date of issuance.

Provision of Trademark Registration Certificate

If there is no objection raised against the trademark in three months, the registrar will then publish the Trademark Registration Certificate with the seal of the Trademark Registry.

Conclusion

Registration of trademark online can be a very hard task for any business entity, and also, it takes a very long time for the registration to complete. So it would be better if you hire a trademark lawyer at the beginning so that it can save you a lot of effort. Plus, discussing all these with a lawyer can be very helpful if you want to register your brand nationally and internationally. For more information linked to How to check trademark status or Trademark registration, you can log into our website: Legal Raasta. Ring us at 8750008585 or send your question on Email: [email protected].

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