India joins the Madrid Protocol

08-04-2013

India joins the Madrid Protocol

© WIPO 2013. Photo: Emmanuel Berrod

India has become the 90th country to join the Madrid Protocol for the international registration of trademarks.

India’s Minister for Commerce and Industry Anand Sharma signed the instrument for accession to the Madrid Protocol at the World Intellectual Property Organisation (WIPO) on Monday.

After the treaty enters into force in India on July 8, trademark owners may protect their community trademarks in up to 89 member states, including the EU, in one language, paying one set of fees in one currency.

Minister Sharma said: “We recognise that this instrument will provide an opportunity for Indian companies, which are increasing their global footprint, to register trademarks in member countries of the protocol through a single application, while also allowing foreign companies a similar dispensation.”

Francis Gurry, director general for WIPO, said: “India’s accession to the Madrid system is a major milestone in bringing us closer to transforming the Madrid System into a system with truly global reach.

“India’s participation in the Madrid system gives brand owners around the world the ability to extend their protection to the important Indian market, through a single, simplified and cost-effective procedure.”

India will be the fourteenth of the G20 countries to join the Madrid system.

Gurry continues: “India’s accession to the international trademark system, as with the recent accessions by Colombia, Mexico, New Zealand and Philippines, signals an era of significant geographical expansion of the Madrid system, which offers greater benefit to right holders worldwide.”

Safir Anand, partner at Anand & Anand in Noida, said: “Prima facie, the notification will benefit small and medium sized companies in India who may be able to save substantial costs of international filing.

He said that as trademark registration costs in India are relatively low, compared with in the US or Europe, India may become a more attractive destination for international trademark applications: “It may well be that seeking a registration in India is in fact economically more viable for a foreign company,” he said.

“Since a lot of enforcement in India also involves actions in district courts or civil courts that may or may not be familiar with the efficacy of international registration system, customs, or criminal actions with police such as raids, the cost advantages are still favourable for a country-level filing.”

He said that the implementation of the Madrid Protocol has been a long time coming, though due to the current backlog of trademark applications at the India’s Industrial Property Office, he is not sure how it will be enforced at such short notice.

“In some cases the backlog is several years and it would be contrary to law to examine a subsequent set of applications under Madrid when past backlog has not been addressed.

“The quality of examinations in India has not been consistent and it is important to both clear the backlog for an effective and updated examination system and for training to examiners,” he said.

Madrid Protocol, India, WIPO, Anand Sharma