International Trademarking: How to Protect Your Brand
International Trademarking: How to Protect Your Brand outside India- When you expand your business beyond India, your brand becomes vulnerable to unauthorized use or copying in other countries. Unlike patents and copyrights, trademarks are territorial IP rights, meaning an Indian trademark registration only protects your brand within India.
Conduct a Comprehensive Trademark Search
India joined the Madrid Protocol in 2013, integrating its trademark system with the international registration framework.
Before launching internationally, perform extensive trademark searches in your target markets. This includes: Searching existing trademarks in target countries' databases, Checking domain names and social media handles, & Researching local language meanings and cultural implications.
International Trademark Filing Strategy
The Madrid Trademark Framework is often the most cost-effective approach. You can file a single trademark application and select the countries accordingly.
The selection of countries for trademark protection depends on the business goals of the enterprise. Trademark applicants can file a single application to register a trademark in up to 131 countries. Some regions offer unified trademark protection, like the European Union Intellectual Property Office (EUIPO) for EU-wide protection.
Preparation of International Trademark
International trademark protection requires significant investment. In many instances, filing necessary use declarations around the trademark brand.
Therefore, while responding to a Provisional Refusal on a trademark application, the 30 days timeline is calculated from the date when the WIPO, International Bureau communicates the provisional refusal document to the authorized trademark representative of the trademark application filed.
Grounds for Refusal under Section 9
The Absolute Grounds of Refusal are mentioned under section 9. The trademark may lack distinctiveness and be descriptive.
The questioned trademark may be in conflict with public order or morality under the absolute grounds for refusal. Under Section 9(1)(a), the trademarks may devoid of distinctive character, example: generic terms or common trade descriptions and refusal of brand marks that don't distinguish goods/services.
Grounds for Refusal: Relative Grounds
The filed brand trademark conflicts with earlier trademark right registered in India. This includes similarity or identity with existing registered trademarks.
Even if similar pending trademark application is filed with India, it might be ground of refusal and especially if trademark user date is claimed. The examination considers visual, phonetic, and conceptual similarity. For instance, if "SPARKLY" is already registered for cleaning products, "SPARKL" for similar goods might face refusal.
Grounds for Refusal: Procedural Grounds
These include technical issues in the filed international trademark application in India such as improper specification of goods and services.
The procedural ground might also include incorrect classification of the said applicable good and services, or missing documentation. The Indian Trademark Registry is particularly strict about the clarity and precision of goods and services descriptions to create level playing field for the trademark in the Indian market.
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