India will become a member of the Madrid Protocol for the International Registration of Marks on 8 July 2013. This will bring the total number of members of the International trade mark system to 90, including the European Union and the majority of the world’s leading economies.
The International trade mark system offers a cost-effective and administratively simple means of protecting trade marks internationally by enabling applicants to apply to protect their trade marks in any selection of member countries with a single International application filed in a single language and with the payment of a single set of fees. This process also removes the need to appoint a representative in each of the countries in which protection is sought unless objections are raised.
In order to protect a trade mark in India, it is currently necessary to appoint an Indian representative and file a separate Indian application directly with the Indian Intellectual Property Office. However, from 8 July 2013 it will be possible to include India in any new International trade mark, or extend an existing International trade mark to cover India, which will significantly simplify the process of protecting a trade mark in India.
Accordingly, we would advise anyone intending to protect a trade mark in India to seriously consider doing so via the International route. However, there is of course a wide variety of factors that must be considered when applying to protect a trade mark internationally and hence we would strongly advise seeking professional advice.
Please direct any queries in relation to the above to the AdamsonJones trade marks team.
14 May 2013