Trade Mark For International Jurisdiction

Introduction

Trade mark is territorial in nature and is valid only at places where it is registered. The protection to the trademark ends at the end of the boundaries of the country it is registered in. However, this does not restrict any one from exporting their goods to other countries in which his trademark is not registered.

Situations might occur where the same/identical trademark is carrying out its business in the same country by other proprietors as well. This might lead them to legal disputes among the concerned proprietors which might take a toll on their reputation and goodwill leading to financial loses. The following are the two ways to avoid such situations:

  1. To have a Due diligence/ ground check if somebody else owns the similar trademark in the country that you are exporting to.
  2. To register a trademark in multiple countries that one is planning to expand his/her business to.

Though both the ideas seem very simple and easy, however, it is a tedious task to check, if there is any trademark registered which is similar, every time one exports to a different country. The second option is equally tedious because it is quite expensive and a lengthy procedure to register a trademark separately in different countries.

However, due to the following conventions and Treaty, it has become easy to register a Trademark in various countries. An important aspect of those treaties/ conventions is that it provides the principles of ‘National Treatment’ and ‘Right to Priority’ to the foreigners.

National Treatment means providing to the foreign applicants of the member countries the same treatment as of its national applicants and Right to Priority means an applicant who already has a registered trademark in any of the member country gets a priority of trademark registration in other member countries also.

The following are the few treaties that makes it easier for the applicant to register their Trade mark  in multiple jurisdiction:

  1. Paris convention (1883): The Paris Convention concentrates on all types of Intellectual Property. The two main provisions of this convention are to provide “National Treatment” and a “Right to Priority”. These rights are provided to all the member countries of the convention. But the right of “National Treatment” is provided with an exception of cancellation of registration of unused marks after a period of time. The right to decide the period is conferred on the respective member countries. India is a member of this convention since 1998.
  2. Madrid Protocol (1989): The Madrid Protocol is an agreement exclusively for trademarks. This treaty provides for international registration of trademarks. All the proprietors of the member countries can register their marks in multiple countries with just one single application. Once a person registers his mark under Madrid Protocol he can protect his mark in all the member countries. India is a party to this since 2013.
  3. Nice Agreement (1957): NICE Agreement is also an agreement exclusive for trademarks. The objective of this agreement is the classification of goods and services, into different classes, for registration. It provides for 46 classes which are internationally accepted in some countries. This agreement is open to all the members of Paris Convention. It is administered by the World Intellectual Property Organisation (WIPO). India follows the international classification of goods and services given by NICE Agreement. It is included in the 4th schedule of Trade Marks Rules, 2002 of India and can also be amended as and when needed.
  4. Vienna Agreement (1973): The Vienna Agreement also concentrates exclusively on trademarks. It gives classification of figurative elements of the trademarks. It consists of 29 categories and 144 divisions. This agreement is also administered by the World Intellectual Property Organisation (WIPO). Though it is open to all the members of Paris Convention India is not a party to this agreement.
  5. Trademark Law Treaty (1994): Trademark Law Treaty is an exclusive treaty for Trademarks. It lays down the procedure for trademark registration. It’s main aim is to harmonise the trademark registration process to make registration of trademark in multiple jurisdictions simpler. However, India is not a party to this treaty.
  6. Trade Related Aspects Of Intellectual Property Rights (TRIPS) (1995): It is an agreement to provide minimum protection to the Intellectual Property of the member countries. It is not an exclusive treaty for trademarks but protects all the IPR’s. It is a mandate for all the member countries to comply with the standards of protection for IPR set by the treaty. India’s trademarks law fully complies with the standards set by the TRIPS with the Trade Marks Act, 1999.
  7. Singapore Treaty (2006): Singapore Treaty is a trademark exclusive treaty and introduced important changes to the Trademark Law Treaty, 1994. It aims at providing a harmonised process of registration for trademarks internationally. India is not a party to this treaty.

Conclusion

From the above discussion, it may be concluded that generally trademark registration is valid only in the respective country it is registered in. But if the trademark is registered under any of the above-mentioned treaties, it would be valid in all the member countries of the treaties. By virtue of India being the party to the Paris Convention, Madrid Protocol, NICE Agreement and TRIPS, all the registrations made in India under any of the above mentioned treaties would be valid in all the other member countries and vice-versa.

 

Author: M.Sai Krupa, Intern at IP and Legal Filings  and can be reached at support@ipandlegalfilings.com.

References:

[1] http://www.lrswami.com/page/foreign-trademark-registration

[2] http://shodhganga.inflibnet.ac.in/bitstream/10603/68188/10/10_chapter%202.pdf

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