The international trade mark system offers many advantages. For instance, it allows trade mark proprietors to file a trade mark in multiple jurisdictions through a single international application which can reduce the costs of filing separate national rights.
It is not without its pitfalls however. Costs savings can be quickly lost if the international application encounters problems at the local registries (because brand owners have not obtained initial local advice concerning the registrability of the mark or the scope of the trade mark specification). Further, an international application must be based upon a home registration and, for the first five years of its life, an international application is dependent upon its home registration. This means that if a home registration is lost within this five year period, the international registration will also be lost.
India’s membership will come into force on 8 July which means that, after this date, owners of international trade marks may extend their rights to India and new applicants can choose India as part of their initial application.
Philippa Olden, Trade Mark Attorney in the Intellectual Property Group, said that “the international trade mark system can offer real advantages over filing separate national filings, but careful consideration needs to be given before embarking on this route to ensure that it is appropriate in the particular circumstances”.