Each country/jurisdiction is entitled to recognize and protect trademark rights in a manner that fulfils its policy goals. The term “international trademark” implies to trademarks which are accepted internationally across a number of countries/jurisdictions. Despite variations in the recognition and enforcement of trademark rights, many countries and jurisdictions have agreed on standard procedures or guidelines for filing applications for trademarks.
REGISTRING AN INTERNATIONAL TRADEMARK
There exist several international agreements which makes it possible to file a single application to register a mark in more than one country. The various types of ways are listed below –
- European Union Trade Mark: The EUTM system provides the trademarks owners with a unified system of protection of their trademarks throughout the European Union by filing of a single application.
- If successful, this one application results in an EUTM registration, which is recognized in all the EU member states.
- The new states are added to the EU as members and eventually this expands the coverage of the existing EUTMs, without any action or payment required.
- The protection of an extended EUTM in a new member state, however, dates from the admission date of the member state to the EU rather than the filing date of the EUTM.
- The initial registration period is 10 years from the date of filing of the EUTM application.
- The registering authority is the European Union Intellectual Property Office, in Alicante, Spain.
The EUTM Registration may be beneficial for the following reasons:
- it is a time-saving and cost-effective procedure;
- having to maintain just a single trademark registration results in administrative efficiencies;
- if someone genuinely make uses of the trademark in one EU Member State than that could be sufficient to secure an EUTM in all the other member states.
Whereas, there is a possibility that the mark will not be recognized as an EUTM if a reason for refusal exists in only one of the Member States.
- Paris Convention: The Paris Convention for the Protection of Industrial Property is an international treaty concerning the protection of intellectual property. It has been adopted by 177 countries. The countries to which the Paris Convention applies constitute the Paris Union.
- Andean Pact: The Andean Pact is an agreement among the member countries of the Andean Community that provides for one common trademark law among the member countries. The community involves Bolivia, Colombia, Ecuador and Peru.
- The Andean Pact does not provide for a common trademark registration. Rather, it provides for certain reciprocal rights to be available upon request of the trademark owner
- African Region Intellectual Property Organization: ARIPO (African Regional Intellectual Property Organization) was formed by members of certain English-speaking African nations.
- The organization enables applicants to file a single application for the protection of a trademark in designated countries that are contracting states to the Lusaka Agreement, which created ARIPO.
- The headquarters and administrative offices of ARIPO are located in Harare, Zimbabwe.
The members of the ARIPO are:
- Botswana, Gambia, Ghana, Kenya, Lesotho, Liberia, Malawi, Mozambique, Namibia, Rwanda, São Tomé and Príncipe, Sierra Leone, Somalia, Sudan, Swaziland, Tanzania, Uganda, Zambia and Zimbabwe.
- African Intellectual Property Organization: OAPI was formed by members of certain French-speaking African nations.
- The organization enables applicants to file a single application for protection of a trademark in designated countries that are contracting parties to the Bangui Agreement, which created OAPI.
The members of the OAPI are:
- Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, Republic of the Congo, Côte d’Ivoire (Ivory Coast), Gabon, Guinea, Guinea Bissau, Equatorial Guinea, Mali, Mauritania, Niger, Senegal, and Togo.
DISTINCTION BETWEEN ARIPO AND OAPI:
| DIFFERENCES | ARIPO | OAPI |
| Countries | Total members of the ARIPO are 18 countries. | Total members of the OAPI are 17 countries. |
| Patent law and Regulation | It is instituted to grant patents on behalf of the Harare Protocol Contracting States. The member states of ARIPO also have their own IP Legislation that coexist along with this. | It is instituted to deal with patents under the Bangui Agreement. Unlike ARIPO, the OAPI member states do not have their own intellectual property legislation. |
| Member States | When filing an ARIPO application, desired states can be designated and application fees are payable only for those designated states. | When filing an OAPI application, all the member countries are automatically included and designation of only certain countries is not possible. |
| National Phase Filing Deadline | 31 Months | 30 Months |
| Requirements for application filing | Power of Attorney (simply signed)Specification, claims and abstract in EnglishFormal drawings, if applicableSequence listing, if applicablePCT International PublicationInternational Search ReportInternational Preliminary Examination ReportInternational Patent Classification | Power of attorney (simply signed)Specification, claims and abstract in English or FrenchFormal drawings, if applicablePriority AssignmentPriority DocumentSworn Translation of Priority Assignment and Priority document if not in English or FrenchCertified priority documentPCT International PublicationInternational Search ReportInternational Preliminary Examination ReportInternational Patent Classification |
| Penalty/Excess Filing Fees | Excess claim fees payable on grant for claims over 10 | Excess claim fees for claims over 10 and page fees of application. Filing fees can quickly become exceptionally high. |
| Examination | Substantive examination is carried out. | Currently only formal examination. |
| Types of Patents | Patents for inventions Divisional Patents Utility Models | Patents for inventions Divisional patents Patent of Addition Utility Models |
| Other Types of IP | Trademarks Copyright Designs Plant Breeders’ Rights | Trademarks Copyright Designs Plant Breeders’ Rights |
WORLD INTELLECTUAL PROPERTY ORGANIZATION (WIPO)
The World Intellectual Property Organization (WIPO) has been a leading forum for advancing this agenda of global promotion of IP protection and enforcement. An International Registration allows trademark owners to register their trademarks in multiple countries (contracting parties) with a single, uniform application through a centralized filing system administered by the WIPO International Bureau. WIPO checks formal requirements, including the accuracy of the goods and services specification and the relevant fees payment, and directs the International Registration to the chosen countries.
The intellectual property office of each designated country then has 12 or 18 months (under the Madrid Protocol) to grant or refuse in the international registration and communicate its decision to the trademark owner. Fixed examination periods make the application examination process predictable and, in some cases, less lengthy.
Madrid Protocol: 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. India has joined the Madrid protocol with effect from 8th July 2013.
Advantages of filing an International Application under Madrid Protocol:
1. Lowers 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 designed at a later stage.
The fees payable in connection with an application for international registration comprise: 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 fee required is generally the basic fee, a complementary fee for each contracting party (for certain Contracting Parties, the complementary fee is replaced by an “individual fee”) and a supplementary fee for each class of goods and services in excess of three.