Points to Know Before Procuring Foreign Trademark Registration

Foreign Trademark Registration
Karan Singh
| Updated: Jun 15, 2021 | Category: International Trademark

Anything which clearly differentiates any product or service of a company from the other companies in the concerned administration or in the market, then it is usually called a Trademark or a Service Mark respectively. The term “Trademark” is normal used in distinguishing the products or goods of a specific company from other companies, while the word “Service Mark” is usually used in differentiating any services offering by a company from the services of other companies in a similar marketplace.

Hence, a Service Mark or a Trademark is a unique mark, signature, logo, word, or any figure which can unambiguously differentiate that product or service of a company in that specific country or global jurisdiction. We can safeguard our Trademark in overseas nations by registering it, so in this blog, we will read about some vital points to know before procuring Foreign Trademark Registration.

Obtaining Foreign Trademark Registration – Essential Considerations

As per the WIPO (World Intellectual Property Organisation), on average, around four million Trademark application are filed every year internationally. In the United States, the Trademark Rights are formed via the use of a mark, and it is improved by procuring a Federal Registration that is with the USPTO (United States Patent & Trademark Office).

Most of the U.S. brands proprietors are not alert that their valuable Trademark Rights discontinue at the U.S. border. Therefore, for the idea of getting protection outside the United States, the Trademark Rights are vital to be obtained separately across the territories.

Further, the eligibility criteria for Foreign Trademark Registration and the criteria for Trademark Infringement differ in a different nation. Subsequently, companies or entities that have the possibility for growing outside the United States need to vigorously plan and procure protection for Trademark in overseas territories that is relevant for their particular industries.

As more brands are continuing to spread their business foreign, it is vital to know the crucial details of Foreign Trademark Registration. The significant key points that should be remembered while applying for the International Trademark Registration are given below:

applying for the International Trademark Registration
  • Register the Trademark in the United States: Before applying for Foreign Trademark Registration, the candidate should register their Trademark in the U.S. (United States), and this can be done via the USPTO (the United States Patent & Trademark Office).

The application for Foreign Trademark Registration can be finished directly from the official website of USPTO. The Foreign Trademark Registration in the United States first shall give more vital grounds to register the Trademark in other nations.

  • Hire an Attorney: In case the candidate is paying attention to Foreign Trademark Registration not covered under the Madrid Agreement as there are some nations not safeguarded under the Agreement of Madrid like South Africa, Canada, and Saudi Arabia. In such nations, the candidate can consider looking for guidance from an attorney of that nation in which he or she is planning to register a mark. As per the suggestion of USPTO, an attorney can be searched via the International Trademark Association.
  • Use the Madrid System: This is the single stop way out for Foreign trademark Registration and managing the Trademark globally. In the Madrid Agreement, the candidates applying for the Foreign Trademark Registration can submit only one application to safeguard their work within a nation’s federation. The Madrid Union is the grouping of various nations that identifies these international Trademarks.

The filing of the MM2 Form, which is available on the website of WIPO, can be applied for the International Trademark Protection. Then, a copy of the application has to be submitted to the U.S. Office. At present, there are 113 nations providing protection under the Madrid Agreement, comprising Australia, France, China, Italy, and the European Union.

The Candidate can pick particular nations or can also select to safeguard their Trademark in all the 113 nations. The candidate has to make the payment of the processing fee for the Foreign Registration of Trademark with the WIPO, as it is less expensive in comparison to being the filing of an individual applicant in each nation.

  • Consider Foreign Translations: It is essential for the candidates to cautiously consider the foreign translations of the words while applying for Foreign Trademark Registration in other languages. Hence, the candidate has to make sure and consider the foreign translation so as to avoid any type of mistake of whatever slogan or work the candidate is using in that particular nation.
  • Work with Due Diligence: It is vital to be on recognisable terms with how this method operated in one specific nation concerning the U.S. with the aim of safeguarding the Trademark in another nation. It is essential to recognise and familiarise with the Trademark guidelines & rules of the nations where Foreign Trademark Registration is applied for. Few of the research resources will comprise the WIPO & the International Trade Administration.
  • Don’t Delay: The most desirable statement is that it’s best not to delay in filing the applications for the International Trademark Registration, primarily if the intention is to do business foreign in the short term.

What are the Necessities for Getting Foreign Trademark Registration?

Following are three main necessities for obtaining International Trademark Registration in India:

  • The candidate should have an Indian National Trademark Application or should have a Trademark Registration with the Indian Trademarks Registry. Therefore, this national Trademark Registration or application shall be used as the basis while applying for a foreign application. The foreign application of Trademark will have the same Trademark list of products & services as we mentioned in the national Trademark application.
  • The candidate must be an Indian resident or domiciled in India or should be a valid commercial establishment/business in India.
  • In the global application, the candidate must select one or more member nations from the Madrid Protocol[1], where the candidate wants to protect their Trademark.

Conclusion

It is essential for the candidate to consider the international issues and validate with the Trademark accounts for possible growth while selecting Trademark protection in a particular nation. Hence, the owners of Trademark must inspect the product, the market, the regulation & laws of that nation systematically before applying for Foreign Trademark Registration.

Read our article:Trademark Application for Foreign Nationals- An Overview

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Karan Singh

A legal writing enthusiast, a wanderer, and a zealous reader. After gaining a lot of knowledge about the diverse legal topics and developing research skills, Karan joined the league of legal content writers to deliver quality-rich blogs.

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