International Protection of Trademarks

Trademarks can have severe implications on international businesses. One example of this relates to Apple’s launch of iPad in China. In 2012, Apple’s launch of iPad in China was delayed due to a tricky trademark related legal issue. The legal complication arose as the word ‘iPad’ was already registered as trademark by a Chinese firm Proview in 2000. This meant that technically Proview had right to use the word ‘iPad’ and to prevent others from using the same word.

Consequently, this meant that Apple could not sell its iPad product without legally using the iPad. Additionally, Chinese trademark law does not allow manufacture of infringing products even if they are not for sale in China. This meant that Apple would not be able to even manufacture iPads in China. Finally, Apple had to give in and settled the matter with Proview by paying a hefty amount of $60 million to Proview in exchange for legally being able to use the trademark ‘iPad’.

The lesson to be learned, from this dispute, is that trademarks, like patents, are IP rights that must be appreciated and protected internationally. So how to go about doing this?

Well, fret not for this post addresses the procedure of getting a trademark registered in multiple jurisdictions using the Madrid system. The Madrid system is the primary international system for facilitating the registration of trademarks in multiple jurisdictions around the world. The Madrid system provides a centrally administered cost-effective system for obtaining a bundle of trademark registrations in separate jurisdictions. Interestingly, India joined the Madrid system in July 2013.

According to the procedure mentioned under the Madrid system, the applicant has to make an international application to the national office (origin office) along with a list of countries wherever protection of the trade mark is sought. Then, the origin office examines whether the international application complies with home state requirements. The application from the origin office is then sent to the International Bureau within two months of that initial date of receipt of the application.

Then, the International Bureau examines the application. On successful examination the International Bureau then records the mark in its register. The mark is then published in international gazette and notified to all member countries seeking their consequent approval and granting of registration. If grounds for objection are found during official examination by any national office, or in case an opposition is filed, a provisional refusal is declared within 18 months of receipt of the application from the International Bureau. Such refusal by a national office based on oppositions can be made after the 18 month time limit is passed from the receipt of the notification. All post refusal procedure of review, appeal and response is done directly between the mark holder and the national office. On conclusion of the issue, a statement is sent to the International Bureau indicating whether the provisional refusal has been either confirmed or is totally withdrawn or partially withdrawn. This statement is also recorded in the International Register and published in the gazette. If no further objection is received within 12-18 months, it is deemed accepted. The duration of protection is ten years but can be renewed further.

By utilizing the procedure provided by the Madrid system, international protection of trademarks can be obtained. Thus, when planning to start a multi-jurisdictional business, be sure to apply for trademark via the Madrid system.

 

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