Pakistan deposited its instrument of accession to the Madrid Protocol on February 24, 2021, making Pakistan the 108th member of the Madrid System, which at the moment of this article covers 124 countries. The Madrid Protocol will come into force in Pakistan on May 24, 2021. This leads us to a few major questions – What is the Madrid System? What is the difference between the Madrid Protocol and Madrid Agreement? What does this mean for Pakistan? How will it change the working of the Pakistan Trade Marks Registry? How will it affect the Trademark Owners in Pakistan?
The Madrid System also known as the Madrid System for the International Registration of Marks is administered by the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland. It is a convenient and cost-effective solution for registering and managing trademarks worldwide, allowing the trademark holders to protect their trademarks in the contracting countries of the Madrid system by filing a single application at WIPO by paying a single set of fees and it also facilitates foreign applicants to protect their trademarks in the base country through Madrid System. Countries that are party to the Madrid System are collectively referred to as the Contracting Parties and these Contracting Parties constitute the Madrid Union.
The Madrid System provides simplicity for trademark owners and allows them convenience and to financially save when applying for and maintaining their marks. The trademark owner will only have to file one application in one language and pay one set of fees to the WIPO instead of filing separately in Trademark Offices of different Contracting Parties in different languages, hiring associates in each country and paying a separate fee in each office. Similarly, subsequent to the International registration, renewals, all changes such as change in name and/or address of the trademark owner, a change in ownership of the trademark or a limitation to the list of goods and/or services in respect of all or some of the Contracting Parties may be recorded via a single procedure and one set of fees.
The Madrid System is governed by two treaties - the Madrid Agreement concluded in 1891 and revised at Brussels (1900), Washington (1911), The Hague (1925), London (1934), Nice (1957) and Stockholm (1967) and amended in 1979, and the Protocol Relating to that Agreement concluded in 1989. Though both treaties are intrinsically linked as they both offer a convenient cost-effective solution for registering and managing trademarks worldwide, they are separate.
The Protocol was created to bring more flexibility to the Madrid System and introduced certain new features with the aim of removing the difficulties that prevented certain countries and intergovernmental organizations from acceding to the Agreement, such as the fact that the Madrid Protocol allows English, Spanish and French as approved working languages. Furthermore, the basis for international registration under the Madrid Protocol is the registration or application in the home country - if the mark has not been registered, but the application has been filed then the application will be used as a basis for the international registration. Also, there is a remedy provision that allows an international application to be changed to a domestic application, if it meets extreme refusal, also known as central attack, from all the countries the applicant has applied to, hence maintaining the interest of the applicant and the date of filing.
The official name of the Madrid Protocol is the “Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, adopted in Madrid on June 27, 1989”. Following a decision in the Madrid Union Assembly (the Assembly) in October 2016, the Agreement is now inoperative, and the Protocol is the sole governing treaty under the Madrid System.
How will the Madrid Protocol affect Pakistan?
The Madrid Protocol will come into force in Pakistan on May 24, 2021 and at the moment of this article, the primary legislation governing trademarks in Pakistan, is the Trade Marks Ordinance 2001 supplemented by the Trade Marks Rules 2004, which do not provide basis in Pakistan for the application of the Madrid Protocol. Therefore, the lawmakers in Pakistan would need to update or amend the law and the rules in order to comply with the Madrid Protocol. As the case may be seen in India, who joined the Madrid Protocol with effect from July 8, 2013 and had to pass the Trade Marks (Amendment) Act 2010 which led to the inclusion of Chapter IVA (containing Sections 36A to 36G) in the Trademarks Act 1999.
The Madrid System would be advantageous to the Pakistan Trade Marks Registry (TMR), as the TMR would no longer need to examine for compliance with formal requirements, or classify the goods or services, nor would it need to publish the trademarks. Furthermore, part of the fees collected by WIPO for Pakistan would become revenue for Pakistan.
However, it will also bring along some concerns, such as the fact that the TMR would need to give a provisional refusal within one year or 18 months (if a declaration is made) and completing examinations in one year or 18 months may be a burden on Pakistan. The case in point is India where a similar problem is being faced as national filings are being delayed as the international applications have to be processed within 18 months.
In Pakistan, there have been a backlog and applications have been pending in the TMR since as far back as mid-1990s, and it will be quite a major concern for the TMR as the Madrid Protocol requires a quick response from the Contracting Countries. Therefore, the TMR would need to deal with all the pending backlogs till the enforcement date. In India, the Indian Trademarks registry has not been able to entertain the national filings because of the lack of manpower. Now that India has adopted the Madrid System, it has been even more difficult for them to look into both National and International filings at the same time and with same manpower.
The TMR would also need to create awareness and provide training to its staff in order to have them ready to adopt the new manner of operations and digitalization of the database.
As for how it affects the Trademark Owners in Pakistan – for those Trademark Owners whose interest lie only in Pakistan, the Madrid Protocol will not be beneficial however for those Trademark Owners whose interest lie in multiple countries, it will provide them with a simple application procedure, whereby they would need to prepare a single form and submit the same accordingly through the TMR with a single set of fees to the WIPO, which is simpler as compared to filing directly to each country via local representatives in Pakistan and also in the country where they want to register the mark.
Furthermore, it will also allow the Trademark Owners in Pakistan to have their marks registered in a vast number of countries through one application, which would be more cost effective than hiring a local representative and translating the application into the languages of the chosen countries.
Similarly, subsequent to the International Registration, renewals and all changes such as change in name and/or address of the Trademark Owner, a change in ownership of the trademark or a limitation to the list of goods and/or services in respect of all or some of the Contracting Parties may be recorded via a single procedure and one set of fees.
Also, Trademark Owners would be able to obtain examination results within one year or 18 months (if a declaration is made) as compared to applying directly in some country, where the Trademark Owners would not know how long it would take to complete the examination.
However, in order to avail these advantages of the Madrid Protocol, the Trademark Owners would need to ensure that a basic registration or basic application has to be made by the Trademark Owner or applicant in the home country (Pakistan). Also, the Trademark owners shall need to ensure that the Trademark Owner or applicant mentioned in the international application and the scope of goods and services listed in the international application are also the same as the ones mentioned in the basic application/registration. However, the downside to this is that, in case basic registration or application is refused, invalidated, cancelled, renounced or ceased within five year from the international registration then the international registration is cancelled as well.
But all in all, Pakistan’s accession to the Madrid System, is a big move for Pakistan and it will help strengthen Pakistan’s Intellectual Property Law and, as WIPO Director General, Mr. Daren Tang has stated during the official announcement, small and medium-sized enterprises and entrepreneurs in Pakistan will benefit from the Madrid system. It will make it convenient for those companies interested in bringing their brands to Pakistan, hence helping Pakistan’s overall economy. So Pakistan’s accession to the Madrid System is a big win for Pakistan.