There is no system prevailing by which a single trademark application is sufficient to protect the trademark rights internationally, except the provision in the Paris Convention that member countries can claim priority of 6 months in filing the subsequent application in other member countries. However, different countries have joined hands for simple and alternate systems to protect the trademark rights in their countries via a single and centralized filing procedure.
Community Trademark ( CTM )
On December 20, 1993, the European Council issued Directive No. 40/94, establishing a single system of trademark registration, known as the Community Trade Mark (CTM), as an alternative to the various registration systems of each nation within the European Community. The system created a unified trademark registration procedure in Europe, whereby one registration provides protection in all member counties of the European Union. The system is administered by the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM) located at Alicante, Spain.
A Community trade mark is a trade mark valid in the European Union as a whole. It is not possible to limit the geographic scope of protection to certain Member States. A CTM is initially for a period of 10 years and can be renewed from time to time. A Community trade mark grants its proprietor an exclusive right to use the trade mark and to prevent third parties to use, without consent, the same or a similar mark for identical or similar goods and/or services as those protected by the mark.
The Community trade mark system provides for one single registration procedure, consisting of a single application, a single language of procedure, a single administrative centre and a single file to be managed. The CTM confers its owner an exclusive right in the 27 member states of the European Union at a reasonable cost. Eight countries are waiting in the wings to join the European Union. CTM registered or applied for will be automatically extended to the new member states without formality or fee. As such, it gives a potentially major cost saving for businesses operating in the EU.
The owner of a Community trade mark can act against infringements by taking measures expressly provided for under the regulations in relation to disputes concerning the infringement and validity of CTMs, through proceedings at the Community trade mark courts established under the CTM Regulations or filing requests for action with EU customs authorities. This administrative procedure even permits CTM owners to request the EU customs authorities to even withhold suspected counterfeit products while under their control.
The benefit of Community trade mark can be availed by non - European Union and prior national registration is not necessary for obtaining the registration under CTM. It is also possible for a Community Trademark to serve as the basis for an International registration under the Madrid Protocol.
An international applicant can seek registration in India based on either a valid CTM registration, or a CTM application, with a right of priority if the Indian application is filed within 6 months of the date of the first filing of the CTM application.
Madrid System for the International Registration of Marks
The Madrid system for the international registration of marks, (known as "the Madrid system"), was established in 1891 and operates under the Madrid Agreement (1891) and the Madrid Protocol (1989). It is administered by the International Bureau of WIPO located in Geneva, Switzerland. The system is applicable among the 85 member countries party to the Madrid Agreement or the Madrid Protocol. The Madrid system provides a trademark owner the opportunity to have his mark protected in several countries by simply filing one application with a single Office, in one language, with one set of fees in one currency.
The Madrid system for the International Registration of trademarks produces the same effects as an application for registration of the mark made in each of the countries designated by the applicant. If the trademark office of a contracting country does not decline protection within a specified period, normally 12 or 18 months, the status of the mark is the same as if it had been registered by that Office.
The Madrid system also greatly simplifies the subsequent management of the mark as it is possible to record subsequent changes (such as a change in ownership or a change in the name or address of the holder) or to renew the registration through a simple single procedural step with the International Bureau of WIPO. Additional countries can also be designated subsequently.
India is not a party to the Madrid System though the Union Cabinet ratified India's accession to the Madrid Protocol in 2007. The Trade Marks (Amendment) Act, 2010 passed on 21st September, 2010 to bring into force the Madrid Protocol in India is still to come into force.
Common Trademark Office under Bangui Agreement
African Intellectual Property Organization (OAPI) is an intergovernmental organization for cooperation among African states in trademark and other industrial property matters. Members of OAPI have replaced their national Trademark Office with a common Trademark Office. OAPI has the capacity to hear applications for trademarks in its member states who are parties to the Bangui protocol.
Advocates, Patent & Trademark Attorneys
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