After much anticipation, India finally joined the Madrid Protocol Concerning the International Registration of Trade Marks on 8 July 2013. From this date, trade mark owners could designate India as part of a new Madrid Protocol International Application.
WIPO has confirmed that, on election by India, those trade mark owners with existing Madrid Protocol Applications/Registrations, which were filed before 8 July 2013, will not be able to subsequently designate India. Either a new Madrid Protocol Application designating India will need to be filed or a national application. As a subsequent designation results in protection in the territory concerned dating back to the date of request for subsequent designation and not the original filing date of the Madrid Protocol Application, this will not have a negative impact on current trade mark owners. However, it is unusual that India has chosen to elect to disallow subsequent designations, since the ability to expand territorial coverage is one of the strengths of the system for brand owners.
India is the fastest growing English speaking economy in the world. This election is likely to cause much interest amongst foreign brand owners. Practically speaking it may also neutralise costs savings between filing national applications and filing applications via the Madrid Protocol. India may even lose out as a territory for brand owners as many of them add on new territories in groups as they join. India would likely have been a choice for addition to an established portfolio looking to extend into new and growing markets.
Where a number of territories around the world are of interest, filing via the Madrid Protocol system usually proves to be the more cost effective method. Therefore, the greater the number of Contracting Parties to the Madrid Protocol, the more global the potential reach of a Madrid Protocol Registration and the more economical it becomes. With India, the Contracting Parties to the Madrid Protocol today number 91.
For further information, please contact Emma Pitcher as co-chair of the India Group or your usual Boult Wade Tennant adviser.