Cross-Border Protection of Trademarks

If you see a shoe with three clean strips on the side, wouldn’t you assume it to be Adidas? Well, most would. This is the impact created by a trademark. A trademark is a distinctive mark, sign, word, logo, symbol, shape, colour combination, or sound which is capable of graphical representation and which makes the goods and services different and distinct from others. In simpler terms, a trademark is a brand’s identity stamp.

Beyond identification, trademarks play a vital role in the marketplace. They serve to identify goods or services as coming from a particular source in the market and assure consumers of a standard quality of the goods or services. To companies, trademarks represent intellectually valuable assets embodying reputation, goodwill, and brand identity. A trademark, therefore, is more than just a name or symbol, it is a legally protected identification of a commercial source and reliability.

So, how do you protect your trademark in India?

When a trademark is registered with the Registry of Trademarks, it is protected under the Trademarks Act, 1999. The registration grants the proprietor exclusive right to use the mark in relation to goods or services for which it is registered, prevents others from using unauthorised, deceptive, or confusingly similar marks, and enables the proprietor to file a civil case in the event of infringement. Once registered, the trademark remains valid for 10 years from the date of application and can be renewed indefinitely.

An unregistered trademark can still be protected under common law through a passing off action. But the proprietor should prove that the trademark,

• • That the mark was coined and used honestly,

• • That the mark is distinctive in nature and has been put to long and continuous usage,

• • That the trademark has acquired a reputation among the customers,

• • That the defendant’s use of a similar mark is likely to cause confusion, damage the reputation and goodwill of the proprietor, or misrepresent the origin of goods.

How to file for a trademark in multiple countries?

Imagine that you want to file a trademark application in multiple countries. Do you think it is practically possible to individually apply for every country? No, it is not. This is where the Madrid System comes into play. Under the Madrid System, a proprietor can file a single international trademark application through their home country trademark office, based on a basic national application or basic registration and by paying the centralised set of fees to WIPO, although additional individual fees may be applicable for some countries. WIPO conducts a formality check after the completion, and the application is sent to the respective countries for independent examination under their local trademark laws. The international registration depends on the basic mark for the first 5 years. If the basic mark in the home country is withdrawn, refused, cancelled, or limited, it will affect the international registration as well. After 5 years, the international registration becomes independent.

Protection of Trademark Cross-border:

1. 1. The Paris Convention of 1883 has laid the foundation for cross-border trademark protection. This convention has set 3 key principles for the protection of trademarks. 
      
      a) National Treatment: which means a foreign trademark owner enjoys the same rights that citizens of that particular country enjoy.

      
      b). 6-month priority period: during which a proprietor who has applied for a trademark in their home country will get a 6-month window to file the same application in other member countries. Any application filed during this period in other member countries is treated as if it were filed on the date of the first application.

      
      c). Protection of well-known trademark across member countries.

       

   2. The TRIPS Agreement sets minimum international standards for the protection of intellectual property, including trademarks. It requires the member countries to provide the criteria for trademark registration. It protects the well-known trademarks and provides effective civil and criminal remedies against infringement.
      
   3. The Nice Classification was established by the Nice Agreement of 1957. It is a framework used to classify goods and services for trademark registration. It includes 45 classes, of which 34 are for goods and 11 for services. This is an international system adopted by most countries, including members of the Madrid System. By using the Nice Classification, applicants and trademark offices can clearly identify the goods or services that fall under a particular class, prevent confusion about the scope of protection, and facilitate more accurate trademark searches and examinations.

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Conclusion:

In today’s global world, brands move faster than borders. A name, logo, or symbol can gain international recognition overnight. This means trademark protection cannot stop at domestic registration. National trademark laws remain the foundation, but international frameworks, such as the Paris Convention, the TRIPS Agreement, the Nice Classification, and the Madrid System, help brands secure protection beyond their home countries. However, cross-border trademark protection does not happen automatically. It requires careful planning, timely filings, and constant watchfulness. Businesses must keep in mind that trademark rights are territorial. They exist because of international cooperation, not because protection is automatically guaranteed everywhere.

 

Authored by,
Ms. Jhanavi Gourishetty
(Associate Advocate – IPR Prosecution)