- Chandrika Saha
INTERNATIONAL PROCEDURE FOR REGISTERING A TRADEMARK ON AN INDIVIDUAL'S NAME
A trademark is basically a brand name, logo, marks used for commercial purpose that distinguishes the goods and services from each other. As this topic is being dealt with individual name, so it shall abide by it only. So, the question here arises – Can trademark be on individual names?
Broadly speaking, one can register name as a trademark. But the names should be used for business purposes . One can register his/her personal names for business purposes like famous personalities Michael Jackson, Julia Roberts.
One can’t register his/her names as a trademark if it is used for personal purpose and if it is likely to be confused with other registered trademarks. This clearly means it cannot be identical to an existing trademark. Before trade marking a name, it’s better to conduct a trademark search.
For the process of registration an international application needs to be filed in the U.S. Patent and Trademark Office (USPTO). It involves certain procedures that need to be followed
ü Searching the trademark database to be sure no one else is using it
ü Filing the mark online, and
ü Paying the registration fee
The USPTO says,
“Patents and trademarks are territorial and must be filed in each country where protection is sought. A U.S. patent or trademark does not afford protection in another country”.[i]
As businesses are expanding their presence overseas it is important to understand the intricacies for registering a trademark in a foreign country. There are ways to register trademark internationally without going through the process of registering with individual countries.
First, one needs to register the trademark in US through the U.S. Patent and Trademark Office (USPTO). This will help to provide stronger grounds to register in different countries.
Then one should adopt the strategy of Madrid system. The international trademark registration system is called the Madrid system or Madrid Protocol. It is administered by the World Intellectual Property Organization (WIPO) located in Geneva, Switzerland.
The Madrid System is a key for registering and regulating trademarks worldwide. Under the Madrid Agreement, a trademark applicant can submit one application to protect his or her work within a union of countries. The Madrid Union is made up of countries that distinguish these international trademarks. There are 113 countries that currently provide protection under the Madrid Agreement, including China, France, Italy, Australia and the European Union.[ii]
One can go for specific countries or can choose all 113 countries to protect the trademark. It will be less expensive than filing individual applications within each country. Last year, nearly 52,000 trademarks were registered under the Madrid Agreement.
There are several other countries not coming under the purview of Madrid Agreement, such as Saudi Arabia, Canada and South Africa. For the registration of a trademark under these countries, we need to hire an attorney.
[i]"How Do I Register a Trademark or Service Mark Internationally?" BY JEAN MURRAY, Updated October 24, 2019, thebalancesmb, https://www.thebalancesmb.com/register-trademark-or-service-mark-internationally-399015 [ii]“What You Need to Trademark Your Personal Name" BY JEAN MURRAY Updated May 30, 2019, thebalancesmb, https://www.thebalancesmb.com/can-i-trademark-my-personal-name-399021