1

GOVERNMENT OF PAKISTAN INTELLECTUAL PROPERTY ORGANISATION OF PAKISTAN (IPO- PAKISTAN)

WORLD INTELLECTUALPROPERTY ORGANIZATION EUROPEAN UNION

WIPO NATIONAL WORKSHOP ON TRADEMARKS AND THE MADRID SYSTEM

December 4 and 5, 2006.Venue: Pakistan Agricultural Research Council (PARC)

Islamabad, Pakistan

Madrid System and Legislative/Regulatory Requirements

Prepared by Javed Safdar Tanwiri, Senior Vice Chairman Pakistan Industrial & Intellectual Property Rights Association (PIPRA)

And

Advocate High Court, Vellani & Vellani

2

The countries falling in the category of developing countries could be divided into those which have acceded to the Madrid System and those which have not as yet acceded, the following table shows examples of such countries:

3

Countries Members of the Madrid System

Countries not members of the Madrid System

Bhutan (member since 4 Aug 2000)

China (member since 4 Oct 1989)

Iran (member since 25 Dec 2003)

Mongolia (member since 16 June 2001)

Republic of Korea (member since 10 April 2003)

Singapore (member since 31 Oct 2000)

Vietnam (member since 11 July 2006)

Brunei DarussalamCambodia

IndiaIndonesia

Lao Peoples Democratic RepublicMalaysia

NepalPakistan

PhilippinesSri LankaThailand

4

Bhutan

Became member of WIPO in 1994

Intellectual Property Office established in 1997

WIPO assisted in drafting the Legislation

Trade Marks Registry set up manually

Automation of Trade Mark Registry initially funded by World Bank

5

Bhutan – contd.

Preparing accession to the Madrid System

Romarin work station and CD Rom provided by WIPO in June 2000

Registrar and Deputy Registrar of IP Office invited to Geneva in July 2000

French Courses were given to the officials related to this field

Integrating the Madrid System with the National System

6

Bhutan – contd.

Finally in Aug 2000 became member of Madrid Agreement and Protocol

Implementing the Madrid System

Compliance with International Standards

Securing budget approval for new office set up and amendment of laws

Recruitment of new personnel for the section

Training the concerned officials

7

CHINA

Embarked on economic reforms in late 1970’s

One language, one application and one set of fees would offer low cost and easy to use channel for International protection of Trade Marks which would be beneficial for development of Chinese Enterprises in foreign market

Series of Laws and Regulations promulgated in early 1980’s made it possible for China to join Madrid System and to provide a mechanism for harmonization of domestic and the International Systems.

8

China – contd. China became party to Paris Convention in 1985

which is precondition for accession to Madrid Agreement

From 1987-1988 Trademark Office completed conversion from domestic classification of good and services to International Classification i.e. Nice Classification

International Registration Division established within Trademark Office

Trade Mark Office selected experienced Trade mark examiners with good knowledge of French and organized special training programmes for them

International Registration Division drew up working standards and procedures for implementation of Madrid Agreement

9

China- contd.

The Division also prepared different types of forms for notifications to International Bureau

Publicity activities were launched during preparation for accession

Training programmes were organized for trademark professionals.

Several delegations sent to participate in working group session on Madrid Protocol as well as meetings for drafting of regulations.

Economic growth and development also created more favourable conditions for China’s accession

Madrid Agreement implemented in China for a number of years and practical experience already gained which made it possible to cope with any problems that may arise after accession to Madrid Protocol

10

China – contd. Continuous economic development and gradual

improvement of domestic trademark system made China more ready for accession to Madrid Protocol

Due to differences between Madrid Agreement and Madrid Protocol TMO adjusted its working procedure, working languages, personnel, official forms, standard of fee, etc.

Declaration was made that time limit to notify refusal of protection governed by Madrid Protocol is 18 months and refusal based on an opposition to be notified after expiry of 18 month limit

In order to help domestic enterprises to understand Madrid Protocol TMO and WIPO jointly organized a series of seminars and training programs in several places in China

In 1995 China deposited the instrument of accession to the Madrid Protocol

11

China – contd. Trademark Law was revised:

Natural persons could be trademark applicants/owners

Registration of service marks, three dimensional marks and color marks accepted

Partial refusal System established

All these amendments laid solid foundation for implementation of Madrid System

12

China – contd. To implement the Madrid System in a more thorough

and regulated manner Rules Governing Implementation of International Registration of Marks were promulgated in 1996 and these Rules were revised in 2003. This regulation has played a very important role in implementation of Madrid System.

Where provisions and procedures in Madrid System and national laws & system were not in complete harmony and could not be reconciled easily, declarations for reservation were made where the Madrid System so provided. For example declaration concerning licenses and working languages.

There were discrepancies between Madrid System and China’s trademark Registration System. Various measures taken to resolve these discrepancies e.g. these related to service marks, classification of goods and services, multiple class applications, refusal system, working procedures (number of refusals, commencement of objection procedure etc), etc.

13

China – contd.

Publicity and Training

Seminars and Training courses

Detailed information regarding international registration on website including application forms in Chinese and foreign language, requirements for filing applications, latest list of contracting parties. Etc.

The International Co-operation and exchange still

continues for deepening the understanding of Madrid System.

14

China – contd.

Achievements:

Madrid System implemented for about 17 years.

The system grew rapidly.

In 1990 only 2048 international registrations designating China. By Chinese businesses only 40 applications for international registration.

By 2005 these numbers grew up to 13,575 and 1334 respectively.

o In 2005 China took Switzerland’s place as the most designated country.

15

China – contd.

As office of origin it acquired the 8th place among all contracting parties and 1st place among all developing countries.

Staff in International Registration Division expanded from original 7 to current 27.

China’s success recognized all over the world in implementation of Madrid System.

The achievements owed to economic blossoming of China and to the great effort by its Trademark Office.

China is a very exceptional case and cannot be compared with countries like Bhutan or other developing countries like Pakistan.

16

SINGAPORE

Preparing for Accession: Member since Oct. 2000

Experience a bit similar to China’s

Broad Areas:

Legislation

Accession Documents

Training

Publicity

Operations

17

Singapore – contd.

Some concerns raised by users of Madrid Protocol:

Need for Agents

Limitations of system – must be the same mark, central attack, few countries within ASEAN region are members.

On the other hand the views expressed by developed countries like Japan, etc., were entirely in favour of the Madrid System

18

Countries not Members of Madrid System (including Pakistan, Malaysia, India, Cambodia,

Nepal, Philippines, Sri Lanka, Thailand, etc.)

The views of such countries are largely similar to each other

Lot of spade work needs to be done before accession

Resource Audit and Management project leading to modernization of trademark system

Need to provide nationals with facility to register trademarks in other countries more efficiently and at minimal cost.

19

Countries not Members of Madrid System – contd.

Need to ensure trademark administration system will be able to respond to procedural requirements of registration within time limits prescribed under Madrid System.

IP Office needs to streamline processes.

Reduced turnaround time and backlog elimination.

Updating of trademark database.

Need to become a competitive player under Madrid System.

20

Countries not Members of Madrid System – contd.

Phases Prior to Accession:

1) Evaluation of Benefits of accession to Agreement or Protocol

2) Examination of Protocol provisions and regulations vis-à-vis national trademark law and rules and

regulations

3) Drafting of paper recommending accession

21

Countries not Members of Madrid System – contd.

4) Consultations with Stakeholders

5) Operationalization of Accession Process by the Government

Pakistan is currently in the initial stages of evaluation benefits

Consultation with stakeholders specifically IP practitioners is very important

IP Attorneys are averse to accession.

22

Countries not Members of Madrid System – contd

Challenge is for IP practitioners to emphasize on trademarks-related legal advice and other services.

Accession to Madrid Protocol may necessitate amendments of IP laws and regulations as well as impact administrative operations of TM Offices.

23

Some Disadvantages of Madrid System

Applicant may, in any case, have to retain local counsel for each member country that refuses or objects to registration of a mark.

If a mark does not clear requirements of all member countries’ trademarks laws at the outset, the cost and expediency advantages begin

to evaporate.

Protocol restricts and impedes subsequent transfer of ownership to citizens of

non-member countries.

Some national registrations these days are quicker in processing than under

Madrid System.

Problems in maintaining sovereignty of each territory? Is the System being forced upon the developing countries which is a large market for developed countries?

24

Some Disadvantages of Madrid System – contd.

“Central Attack” within 5 years of basic registration revokes registrations in all designated jurisdictions.

More beneficial for developed countries?

Applicant must satisfy requirements of citizenship, domicile or corporate/industrial/commercial presence and base IA on existing national application or registration. No such requirement for a normal national application.

Asian countries such as India, Bangladesh, Indonesia, Philippines, Sri Lanka, Malaysia, Nepal, Taiwan and Thailand are not yet members and cannot therefore be designated.

Some products are manufactured on a large scale in Pakistan due to low manufacturing costs and exported unbranded to foreign proprietors therefore no need for local businesses to register their trade marks abroad.

25

Disadvantages – contd.

There are hardly any local businesses in Pakistan which have registered or intend to register trademarks on a wide scale abroad.

The present turnaround time at TMO is 3-4 years due to which there is huge backlog. Accession may result in a large flow of applications/designations and impose huge burden and International Applications may be given preference over local applications.

Due to cost effectiveness for developed countries the Register is most likely to get piled up with marks which may never be actually used in certain member countries.

26

Disadvantages – contd.

Expertise/Staff of Trade Marks Registry and IP Law firms may become redundant and there may be substantial lay-offs.

Valuable services of local attorneys will no more be available to Trade Marks Office

Government benefits from taxes paid on earnings of local attorneys who also provide employment to a large number of IP professionals including para-legal staff. There will be loss of revenue for the Government and joblessness.

27

Conclusion:

In deciding to join or not Pakistan needs to first specify what benefits will be there for its own nationals and to the country as a whole. Specify the overall national gains.

Learning from others’ experiences the following steps, among others, need to be taken if at all accession is obligatory under Third Generation Agreement with European Union:

- Close Evaluation of benefits.

- Proper examination of Provisions of the Protocol vis-à-vis national laws and regulations.

- Investigate whether developing countries similar to

Pakistan were able to promote their business, trade and

investment only because of accession to Madrid System.

28

Conclusion – contd.

- Stakeholders particularly the local chambers of commerce as well as the IP Practitioners be taken into confidence.

- Administrative measures be taken for efficient functioning of TM Office.

- Provision of up to date facilities to the TM Office.

Keeping in view the present circumstances Pakistan is not fully prepared as yet to accede to the Madrid System in the near future.

29

Thank you