Pakistan is due to accede to the Madrid Protocol by June 2019. This article will outline some of the benefits and disadvantages of acceding to the Madrid protocol and some challenges that Pakistan may face in the process.
The Madrid Protocol (hereinafter “the Protocol”) is an international treaty administered by the International Bureau of the World Intellectual Property Organisation (hereinafter “WIPO”). It gives trademark owners the opportunity of having their trademarks protected in several countries, by filing just one application with their own national trademark office. Since, in Pakistan, there is no proper mechanism to register trademarks through a single application internationally, accession to the Protocol is believed to be a highly beneficial step for Pakistan. It is also expected that this step will facilitate investors, entrepreneurs and local businesses in Pakistan.
Pakistan is now taking “revolutionary steps” through the office of the Intellectual Property Organization of Pakistan (hereinafter “IPO Pakistan”) to bring drastic changes in the promotion and protection of IP rights in Pakistan, while preparing for the Protocol. WIPO has praised IPO Pakistan for this preparation.
According to WIPO statistics, currently there are 1.3 million trademarks registered in the Madrid System and this system is the top choice among export-oriented brand owners for international trademark registration. This means that the accession by Pakistan to the Protocol will open up abundant opportunities for the Pakistani economy.
The main advantage of the Madrid System for trademark owners is that it is a one-stop solution to obtain and maintain protection of their trademarks in multiple markets. The Protocol provides for a centrally administered system of obtaining a bundle of trademark registrations in separate jurisdictions. This system is more effective than seeking protection of a trademark separately in each individual country of interest. The Protocol provides a mechanism for protection of a trademark in each member country in the same way as if the trademark registration had been applied for in the office of that member country.
Other benefits of the Protocol include the reduction of filing fees, which adds up to a substantial amount when separate national filing applications are made in individual countries. The Protocol also helps keep the cost low for trademark owners, as they do not have to engage a local agent/lawyer from each designated country, unless objections or oppositions are raised against the trademark application. Furthermore, the post-registration stage is also made inexpensive and efficient, since processes such as recordals of changes in names/addresses, renewals, assignments etc. are all carried out centrally, without the filing fees being paid in each of the designated countries. The renewal process is also expedited due to the centralised renewal system and the trademark owners also have the benefit of avoiding different renewal procedures in various international trademark offices.
Acceding to the Protocol is advantageous for Pakistan since it is expected that when Pakistan accedes to the Protocol in June 2019, bigger foreign investments will be attracted to Pakistan. Further, Pakistani businesses will also benefit with this accession, since local business will be able to get brand protection in over 119 member countries. Joining the Protocol will open up possible opportunities to develop Pakistan’s export markets too. Pakistani businesses, which have markets abroad, such as the health and food industries, clothing and textile industry, will be able to take advantage of having their brands protected internationally.
Further, if Pakistan is selected as a designated country in international applications, it will enjoy a proportionate share of the amounts received from the supplementary and complementary fees under the Protocol. This will be a new revenue generating opportunity for IPO Pakistan.
Disadvantages and challenges:
Despite the benefits of becoming a member state and acceding to the Protocol, there are some disadvantages of filing under the Protocol as well. One of the main disadvantages of filing under the Protocol is that the international registration remains dependent on the basic application in the country of origin. This means, that for a period of five years from the date of registration, if, the basic application is refused or withdrawn, cancelled or lapsed, then the protection of the international registration can no longer be invoked. This is known as “central attack”.
Another big challenge is that international applications for the Madrid marks have tighter deadlines, i.e. applications have to be processed within 18 months. Many countries, which have already acceded to the Protocol, have had trouble managing these tight deadlines. Zimbabwe is one such example, where the majority of the international applications proceeded to registration without examination or publication due to the expiration of the refusal period. This led to confusingly similar or identical marks on the Register. In Japan too, managing the 18 months deadline was the biggest challenge. However, Japan adopted several important strategies to combat this challenge, which included introduction of a paperless system for application procedures (which sped up the workflow), increasing the number of application examiners and outsourcing certain routine steps of the examination process.
These tight deadlines will most likely raise capacity issues for IPO Pakistan as well. IPO Pakistan already has a backlog, especially in the opposition section where there are indefinite delays in the hearing of opposition matters. Therefore, Pakistan will need to be well-prepared to tackle these pressures effectively. It is imperative that prior to acceding to the Protocol, IPO Pakistan increases its personnel working with the office. It would be beneficial to assign different teams to handle national registrations and international applications. IPO Pakistan will also need to introduce a fully automated IT system for online case management and for E-filings. Further, it will be vital to train and educate the personnel to become accustomed to the new system, so that they can work competently.
Another major challenge for Pakistan will be to modify its current trademark law, i.e. the Trade Marks Ordinance, 2001, to comply with the Madrid System. In India, the Trade Marks Act, 1999, was amended to include a specific chapter focusing on the “Special Provisions relating to Protection of Trademarks through international registration under the Madrid Protocol.” Similarly, Pakistan will also require to bring in the necessary changes to its trademark law. Although, amending the law can be a complex and daunting task, many member countries have successfully made these modifications and so can Pakistan.
Many countries have also complained that the filing cost per application turns out to be high, when additional costs are added to the application. The fees payable for international registrations under the Madrid System comprise of the basic fee; a complementary fee for each Contracting Party designated; and a supplementary fee for each class of goods and services in excess of three. This cost can add up to become quite a substantial amount, especially for countries like Pakistan, where the majority of businesses are from small to medium sized.
Besides the above disadvantages and administrative challenges, acceding to the Protocol may impact the local practice of intellectual property law practitioners in Pakistan. The local trademark agents/lawyers rely largely on trade mark filings and a substantial number of trade mark filings in Pakistan originate from foreign trademark owners. Generally, in Pakistan, both local and foreign trademark applicants who wish to register their trademarks engage Pakistani trademark agents/lawyers. Joining the Madrid System means that foreign trademark owners who wish to register their trademarks in Pakistan no longer require to engage the local agents/lawyers, amounting to a loss of business for the local practitioners.
Although many countries faced challenges when they acceded to the Protocol, with time they were adequately dealt with. Pakistan will have its own share of challenges too but the international registration is an important, effective and beneficial system for obtaining trademark rights in multiple jurisdictions. While the challenges which Pakistan may possibly face are many, they are not insurmountable. In preparing for the Protocol, it will be beneficial for Pakistan to rely on the guidelines given by WIPO on how to best prepare for “Madrid Protocol Accession”. These guidelines include useful topics relating to the modification of legislation, organizational and institutional considerations, procedural and operational considerations and IT and automation considerations. Further, WIPO also provides extensive training to members of the accession team on the procedures of the Protocol and common Regulations, which would also be beneficial for the road leading to the accession by Pakistan.