Can Foreign Applicants Also Apply For the Registration of Their Trademarks in India?

Trademark registration helps you protect any number, sign, image, or logo that helps you differentiate your brand from your competitors. Hence, trademark registration helps in providing your brand with a unique and fresh identity that separates it from the rest of the companies in the market. Without proper trademark registration, other companies would be able to use your brand name or logo and attract customers away from your brand. 

Could you imagine a world wherein various companies used McDonald’s iconic M or Apple’s half-bitten apple? That is the power of good marketing, and companies should do everything in their power to ensure they retain their brand identity. But how does trademark registration work with foreign companies? In this article, we will take a look at how foreign applicants can apply for trademark registration in India.

How does one file a trademark in India?

Trademark registration in India occurs through the Trademarks Registry which works under the Office of the Controller General for Patents, Designs, and Trademarks, India. A trademark registered in India is valid for ten years, following which the owner may renew the trademark for similar periods. The process of trademark registration and processing now occurs online, making the whole system more straightforward and efficient.

Are trademarks registered within India valid internationally?

One of the most inherent and integral characteristics of trademarks is that they are territorial. Hence, to be valid in different places, they will require separate filings that are specific to different areas. Therefore, if you wish to protect your brand or logo in different countries, you will have to file separate trademark registration applications. However, specific protocols and conventions such as the Madrid Protocol help in forming a centralised trademark registration system. Brands can trademark any one or a combination of the following things:

1. Letter or Word
2. Number
3. Phrase
4. Graphics
5. Logo
6. Sound Mark
7. Smell or a mix of colours

What is the significance of the Madrid Protocol?

The Madrid Protocol serves as a comprehensive international agreement that deals with the mutual grant of trademarks. The territorial nature of trademarks means they can grant protection only within national borders. However, the enactment of this Protocol helped extend the rights of such grants in various other countries. The Madrid Agreement, 1989 gave rise to this Protocol which has been in force since 1995. The International Bureau of World Intellectual Property, based in Geneva, Switzerland, is responsible for implementing the Madrid Protocol. The enactment of this Protocol also makes it necessary for businesses to run international trademark searches before finalising their design.

While registering a trademark protects brand identity in the country of filing, it does not protect the brand’s interests beyond national borders. In the past, companies had to register their trademark individually in every country to gain such protection. The Madrid Protocol was borne out of a need to remove the inconvenience caused due to the need for an assortment of applications. Hence, the Madrid system works as a single-window solution to this problem, helping brands around the world protect their best interests. 

What is India’s relationship with the Madrid Protocol?

India became a member of the Madrid Protocol in 2013 and hence as a member of this international treaty; it has the right to extend its trademark rights to certain other countries. As a result, several MSMEs and other businesses have been able to enjoy extensive trademark rights. While filing trademarks to the Madrid protocol happens via the Indian trademark office, it allows domestic businesses to protect their brand identity across multiple jurisdictions. 

Why opt for international trademark protection?

1. Helps in protecting the exports you send to foreign markets.
2. Gain inherent brand value in the nations to which you export your products.
3. Better brand credibility, trustworthiness, and goodwill leading to more customers
4. Ability to gain opportunities and brand exposure in potential or prospective markets.
5. Chance to attract better investors and creditors

What is the process of obtaining trademark registration under the Madrid Protocol?

1. Individuals will have to apply through the Indian trademark registration portal which they can visit via this link.
2. Applicants must also clearly demarcate in which member countries they wish to enjoy trademark protection. 
3. The Indian Trademark Registry then checks whether the applicant possesses a primary mark. They will also review and verify for what products the applicant is seeking protection and whether it is viable.
4. The office then transfers this application to the World Intellectual Property Organisation, which is based in Geneva for further processing.
5. In case no one objects within eighteen months of notifying the WIPO, the organisation extended its protection to the trademark. 

Can foreign applicants apply for trademarks in India?

Yes, absolutely! India does not place any ban on foreigners from applying for a trademark in India. The applicants may choose to gain this through the Madrid Protocol or by applying directly through the Indian trademark office. As shown above, if the applicant goes through the Madrid Protocol, they can apply for a trademark in their home country, and then ask for an extension of protection in India. Additionally, they can also apply via the Indian Trademark Registry and try to get a trademark locally in India. However, there are a few advantages that the Madrid Protocol provides, and they are as follows;

1. Works as a cost-effective, and fast way to secure trademark in India and all over the world
2. Removes the need to file separate trademark applications in countries
3. Includes approximately 116 countries allowing you to expand to attractive markets 
4. Saves a lot of time and effort which can be put to use on more important matters
5. Improves the chances of attracting franchising opportunities outside India 

The Madrid Protocol allows individuals to extend their trademark to other countries easily. Meanwhile, India also follows a multi-class application system by splitting products and services into 42 different categories. Foreign applicants can take the help of a legal expert from India and assess which category they want to apply under, and then apply accordingly. If the foreign individual wishes to apply the Madrid Protocol, he or she will have to be from a member country.