As of 8 July 2013, India will become the 90th country to join the Madrid Protocol for the International Registration of Trademarks and the fifth country to join within the last year. Taking over 6 years to implement, this membership will encourage trademark owners to protect their rights in India, at a reduced rate, whilst also aiding both national competition and international trade significantly.
The Madrid Protocol system allows trademark owners to register their trademarks in all contracting countries, under a single system. In order to benefit from these reduced costs and simplified procedure, trademark owners need a “base” trademark application/registration, in their country of residence or business. Some important commercial markets fall outside of the Madrid Protocol system and require a national trademark application to be filed, for example, Canada, South Africa and Brazil.
Once India has fully acceded to the Madrid Protocol system, it is anticipated that foreign business owners will seek protection in India or extend their existing Madrid Protocol registrations to cover India. An advantage of the Madrid Protocol system is the ability to “add” countries to a registration at a later date by making a “subsequent designation”. It must be noted that the country or countries covered by the subsequent designation are granted the actual date of filing, not the earlier filing date of the existing registration.
For potential applicants and existing trademark owners, the main benefits of the Madrid Protocol system are that it offers a harmonized and simplified registration procedure for protecting trademarks across a number of countries in a cost-effective manner, with a single renewal date. The appointment of local Attorneys is not required in each country before filing the Madrid Protocol registration, although if examination objection or third party opposition is encountered in a particular country, local Attorney representation will be needed.
The main disadvantage of the Madrid Protocol system is that the base registration can be subjected to a “central attack”. This means that, for a period of five years after the registration date, if the base registration is revoked or invalidated for any reason, the Madrid Protocol registration, will fall. In these circumstances, the Madrid Protocol registration can be transformed into national trade mark applications but this process is costly. To try and mitigate against the risk of central attack, a strong “base” registration is recommended. This requires careful due diligence when selecting new trademarks to avoid conflicts with earlier registered and unregistered trademark rights. Trademark searching can be carried out in many countries of the world.
From 8 July 2013, UK and European trademark owners should consider designating India under the Madrid Protocol system, increasing international protection and opening up new business markets.
If trademark protection is required in India or any other country or countries, please talk to the team at Albright IP, who will use their experience to advise how to achieve comprehensive international protection in a cost-effective manner
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