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  1. GOVERNMENT OF PAKISTAN INTELLECTUAL PROPERTY ORGANISATION OF PAKISTAN (IPO- PAKISTAN) WORLDINTELLECTUALPROPERTY 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. 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

  4. 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

  5. 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

  6. 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.

  7. 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

  8. 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

  9. China – contd. • Continuous economic development and gradual improvement ofdomestic 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

  10. China – contd. • Trademark Law was revised: • Natural persons could be trademarkapplicants/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

  11. 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.

  12. 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.

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

  14. 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.

  15. SINGAPORE Preparing for Accession: Member since Oct. 2000 • Experience a bit similar to China’s • Broad Areas: • Legislation • Accession Documents • Training • Publicity • Operations

  16. 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

  17. 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.

  18. 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.

  19. 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

  20. 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.

  21. 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.

  22. 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?

  23. 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.

  24. 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.

  25. 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.

  26. 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.

  27. 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.

  28. Thank you