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IPO-Pakistan. ANALYSIS ON THE IMPACT OF MADRID PROTOCOL FOR THE ECONOMIES OF DEVELOPING COUNTRIES. Asfand Ali Assistant Director IPO-Pakistan (September 24, 2008). Outline of the Presentation. What is Madrid System; Brief Introduction of Madrid Protocol; Skeleton of the Research Topic;

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Analysis on the impact of madrid protocol for the economies of developing countries

IPO-Pakistan

ANALYSIS ON THE IMPACT OF MADRID PROTOCOL FOR THE ECONOMIES OF DEVELOPING COUNTRIES

Asfand AliAssistant DirectorIPO-Pakistan(September 24, 2008)


Outline of the presentation
Outline of the Presentation

  • What is Madrid System;

  • Brief Introduction of Madrid Protocol;

  • Skeleton of the Research Topic;

  • Abstract of the Research;

  • Formulation of Hypotheses;

  • Consideration of the Results; and

  • Recommendations.

IPO-Pakistan


What is madrid system

IPO-Pakistan

What is Madrid System

  • Madrid System is for the International Registration of Marks and functions under the Madrid Agreement (1891) and the Madrid Protocol (1989).

  • Madrid System is administered by the International Bureau of WIPO (A specialized UN Agency) based in Geneva, Switzerland.

  • The Members of the Madrid System forms a Madrid Union.

  • There are total 83 Members of the Madrid Union as on June 16, 2008. Out of these, 56 Members are Party to the Madrid Agreement and 76 Members are Party to the Madrid Protocol.


Brief introduction of madrid protocol

IPO-Pakistan

Brief Introduction of Madrid Protocol

  • There are two routes for the International Registration of Marks:

    • Conventional Paris Convention route; and

    • Modern Madrid Protocol route.

  • The basic difference between the two routes are described as under:


Brief introduction of madrid protocol contd

Country-1

Paris Convention

Country-2

Country-3

Madrid Protocol

Country-1

International Bureau of WIPO

Country-2

Country-3

IPO-Pakistan

Brief Introduction of Madrid Protocol (contd.)

  • The difference between the two procedures can be illustrated with the following representations:


Brief introduction of madrid protocol contd1

IPO-Pakistan

Brief Introduction of Madrid Protocol (contd.)

Basic Procedure of Madrid Protocol:

  • The application for the International Registration of Marks via Madrid Protocol is based on the following two criteria:

    • Basic Application; or

    • Basic Registration.

  • The Office of Origin forwards the International Application to the IB of WIPO after formality examination.

  • The IB of WIPO also formally examine the application and register the Mark in the International Register and publish it in the WIPO Gazette of International Marks.

  • The IB of WIPO also issue a Registration Certificate to the applicant.


Brief introduction of madrid protocol contd2

IPO-Pakistan

Brief Introduction of Madrid Protocol (contd.)

  • After the International Registration, the International Application is forwarded to the designated Contracting Parties.

  • The designated Contracting Parties will examine the International Application according to their own National Legislations.

  • The designated Contracting Parties will examine the International Application in 12 / 18 months or more than 18 months in case of any opposition.

  • If a designated Contracting Party will not inform the IB of WIPO within the prescribed time period, the Mark will deemed to be registered in that Contracting Party.


Skeleton of the research topic

IPO-Pakistan

Skeleton of the Research Topic

  • Introduction of the Research Theme;

    • Background;

    • Hypothesis; and

    • Methodology.

  • Overview of the Madrid Protocol;

  • Implementation of Methodology;

  • Consideration of the Results; and

  • Recommendations.

  • Annexes


Abstract of the research

IPO-Pakistan

Abstract of the Research

  • The study is based on the Impact of Madrid Protocol for the Economies of Developing Countries. In this aspect, different parameters are studied which can play an important role for Developing Nations before acceding to Madrid Protocol. These parameters includes the following:

    • Amendments in the Trade Marks legislation;

    • Awareness and Support Measures for facilitation of the user of the system;

    • Fees for the International Registration of a Mark through Madrid Protocol;

    • Strategy of the Japanese Companies with emphasis on Small and Medium Enterprises to utilize the Madrid Protocol; and

    • Operating System of Japan Patent Office (JPO) for handling the International Applications filed via Madrid Protocol both as an “Office of Origin” and as a “Designated Contracting Party”.


Formulation of hypotheses

IPO-Pakistan

Formulation of Hypotheses

Hypothesis No. 1:

Background:

  • The Current Legislation is required to be amended before acceding to the Madrid Protocol.

    Hypothesis:

  • The Current Legislation have to be amended in line with the provisions of the Madrid Protocol.

    Methodology:

  • Comparison of the Provisions of the Madrid Protocol in the National Trade Mark Legislations of Japan, Singapore and United States of America and Conflicts between the Domestic Trade Marks Legislation of Pakistan and Madrid Protocol.


Formulation of hypotheses contd

IPO-Pakistan

Formulation of Hypotheses (contd.)

Hypothesis No. 2:

Background:

  • Most of the Industries in Pakistan consist of Small and Medium Enterprises that are not well aware of the importance of Registration of Trade Marks at National and International Levels.

    Hypothesis:

  • Capacity Building of the SME sector of Pakistan to understand the importance of Registration of Trade Marks through Public Awareness Campaigns.

    Methodology:

  • Study of the Public Awareness Strategy and Support for Small and Medium Enterprises in Japan.


Formulation of hypotheses contd1

IPO-Pakistan

Formulation of Hypotheses (contd.)

Hypothesis No. 3:

Background:

  • The SME sector of Developing Countries is financially not so strong to afford the fees for the International Registration of Marks through Madrid Protocol.

    Hypothesis:

  • Financial Support to the SME sector for the International Registration of Marks via Madrid Protocol.

    Methodology:

  • Comparison of the fees of National Registration of a Mark in Pakistan with the fees of International Registration of a Mark through Madrid Protocol.


Formulation of hypotheses contd2

IPO-Pakistan

Formulation of Hypotheses (contd.)

Hypothesis No. 4:

Background:

  • The Economy of Japan is mainly based on Small and Medium Enterprises.

    Hypothesis:

  • Strategy by the Japanese Companies particularly SMEs to draw maximum benefit from the Madrid Protocol.

    Methodology:

  • Distribution of Questionnaire to the Japanese Companies particularly SMEs and Interviews of Trade Mark Attorneys practicing Madrid Protocol in Japan.


Formulation of hypotheses contd3

IPO-Pakistan

Formulation of Hypotheses (contd.)

Hypothesis No. 5:

Background:

  • The staff requirements, capacity building of the staff, workload analysis and automation requirements are also the key factors before accession to Madrid Protocol.

    Hypothesis:

  • Study of the Operating System of Japan for handling International Applications filed through Madrid Protocol.

    Methodology:

  • Distribution of Questionnaire to the Japan Patent Office and Interview of the Officials of JPO.


Consideration of the results

IPO-Pakistan

Consideration of the Results

Hypothesis No. 1:

Consequence of the Comparison of the Common Provisions of Madrid Protocol in the National Trade Marks Legislations of Japan, Singapore and USA:

  • In my point of view there is no need of amendment in the existing National Trade Marks Law because each Contracting Party has to examine the application according to its own National Legislation;

  • Rather, there is a need to include an additional chapter to the existing National Law in order to give effect to the provisions of Madrid Protocol just like in the legislations of Japan, Singapore and USA;


Consideration of the results contd

IPO-Pakistan

Consideration of the Results (contd.)

Hypothesis No. 1:(contd.)

Consequence of the Conflicts between the National Trade Marks Law of Pakistan and the Madrid Protocol:

  • In my opinion, these conflicts can be remedied in the following two ways:

    • The domestic Trade Marks legislation may be amended in line with the provisions of the Madrid Protocol; or

    • A new chapter may be incorporated in the domestic Trade Marks legislation to register the international applications of Marks filed through Madrid Protocol.


Consideration of the results contd1

IPO-Pakistan

Consideration of the Results (contd.)

Hypothesis No. 2:

Effect of the Awareness Strategy for Small

and Medium Enterprises in Japan:

  • Japan Patent Office has implemented the following activities for the development of human resource in the field of IP:

    • Programs for elementary schools, junior high schools, high schools, universities, adults in general, researchers, entrepreneurs including SMEs and experts;

    • Explanatory meetings to the persons who are involved in intellectual property matters;

    • Seminars and Trainings for SMEs and Venture Companies;

    • Training seminars for fostering Patent Licensing Experts;

    • The Regional Headquarters for Intellectual Property Strategy in each region implement measures for raising the awareness level of SMEs and promotion of appropriate use of intellectual property;

    • Patent Office is established in each Regional Bureau of Economy, Trade and Industry to provide information on IP and promoting utilization of Industrial Property rights; and

    • Distribution of a Compendium of examples of Patent Utilization.


Consideration of the results contd2

IPO-Pakistan

Consideration of the Results (contd.)

Hypothesis No. 2:(contd.)

Effect of the Support Measures for Small

and Medium Enterprises in Japan:

  • The various support measures taken by the Japan Patent Office for small and medium enterprises of Japan are elaborated as under:

    • Consultation services on Industrial Property rights;

    • Intellectual Property specialists to provide support to SMEs in terms of consultations, raising awareness and developing human resources in local areas;

    • Free individual consultation services by experts;

    • Support for Regional IP Advisory Counters established at Chambers of Commerce and Industry;

    • Industrial Property Digital Library (IPDL);

    • Patent Information Advisors;

    • Support of Prior Art Searches;

    • Reduction or exemption from Examination Request Fee;

    • Accelerated examinations and accelerated appeal/trial;

    • Refund system on Examination Request Fee;

    • Reduction or exemption from the Patent Annual Fees;

    • Project for supporting the formulation of Intellectual Property Strategies; and

    • Project on Model Utilization of Intellectual Property Rights.


Consideration of the results contd3

IPO-Pakistan

Consideration of the Results (contd.)

Hypothesis No. 3:

Outcome of the Comparison of Fees of Domestic Registration of a Mark in Pakistan with the Fees of International Registration of a Mark via Madrid Protocol:

  • In Pakistan, the fees required for the domestic registration of a Mark in one class is around PKR 5,000 (76 Swiss Francs);

    [1CHF = 66PKR]

  • Whereas in order to register a Mark through Madrid Protocol, the applicant has to pay a Basic Fee (653 or 903 Swiss Francs), a Supplementary Fee (73 Swiss Francs for each class beyond three classes) and a Complementary Fee (73 Swiss Francs) or if a Contracting Party has fixed its own Individual Fee then the applicant has to pay the Basic Fee and the Individual Fee fixed by that Contracting Party;


Consideration of the results contd4

IPO-Pakistan

Consideration of the Results (contd.)

Hypothesis No. 3:(contd.)

  • The fees of PKR 5,000 for domestic registration of a Mark in Pakistan does not predict the correct amount of fee and thus cannot be compared with the fee for the international registration of a Mark via Madrid Protocol. This is because of the following facts:

    • In Pakistan, separate application must be filed for each class whereas in Madrid Protocol one application covers all the classes of goods and services; and

    • In Pakistan, there is Pre-Grant Opposition System and one can never be sure whether an opposition or oppositions are going to be filed against the registration of a Mark or not. Therefore, PKR 5,000 is not a fixed amount of fee for the domestic registration of a Mark in Pakistan because against each opposition, applicant has to file a counterstatement along with the prescribed amount of fee.


Consideration of the results contd5

Number of

Employees

IPO-Pakistan

Consideration of the Results (contd.)

Hypothesis No. 4:

Upshot of the Questionnaire to Japanese Companies:

  • A questionnaire is circulated to almost 100 Japanese Companies particularly SMEs. Out of 100, replies of 23 companies are received and the analysis of these replies is represented in the form of pie charts as under:


Consideration of the results contd6

IPO-Pakistan

Consideration of the Results (contd.)

  • What do you think that IPRs are beneficial for a company?

  • How many IPRs are owned by your company?


Consideration of the results contd7

IPO-Pakistan

Consideration of the Results (contd.)

  • Which is the most important IPR for an SME to grow?

  • Does your company has its own website?


Consideration of the results contd8

IPO-Pakistan

Consideration of the Results (contd.)

  • Does your company has given its IP Profile on the website?

  • Does Trade Marks are playing a key role in growing the business of your company?


Consideration of the results contd9

IPO-Pakistan

Consideration of the Results (contd.)

  • What are the number of Trade Marks that are owned by your company?

  • Does the number of Trade Marks owned by your company will increase in future?


Consideration of the results contd10

IPO-Pakistan

Consideration of the Results (contd.)

  • Does your company registering its Trade Marks in foreign countries?

  • What are the number of Trade Marks that are registered abroad by your company?


Consideration of the results contd11

IPO-Pakistan

Consideration of the Results (contd.)

  • What is the number of countries in which your company has registered its Trade Marks?

  • Does Trade Marks are registered abroad by Paris Convention route or Madrid Protocol route?


Consideration of the results contd12

IPO-Pakistan

Consideration of the Results (contd.)

  • What are the number of Trade Marks that are registered in foreign countries by your company before and after the accession of Japan to Madrid Protocol?

    Before Accession to Madrid ProtocolAfter Accession to Madrid Protocol


Consideration of the results contd13

IPO-Pakistan

Consideration of the Results (contd.)

  • What are the number of countries in which your company has registered its Trade Marks before and after the accession of Japan to Madrid Protocol?

    Before Accession to Madrid ProtocolAfter Accession to Madrid Protocol


Consideration of the results contd14

IPO-Pakistan

Consideration of the Results (contd.)

  • How your company files an application for Trade Marks registration in foreign countries?

    Paris ConventionMadrid Protocol


Consideration of the results contd15

IPO-Pakistan

Consideration of the Results (contd.)

  • Is it in the benefit of a company particularly an SME to establish an IP Department?

  • Is there an IP Department in your company?


Consideration of the results contd16

IPO-Pakistan

Consideration of the Results (contd.)

  • What is the number of employees in the IP Department of your company?

  • What is the role of the IP Department in your company?

  • Most of the companies that have an IP Department have the same role that is the acquisition, management and maintenance of IP rights, handling of licensing agreements and disputes and search of IP rights of other companies.


Consideration of the results contd17

IPO-Pakistan

Consideration of the Results (contd.)

  • Do you have some knowledge about the International Treaties to which Japan is a signatory state?

  • These International Treaties are helpful for your company?


Consideration of the results contd18

IPO-Pakistan

Consideration of the Results (contd.)

  • Is it in the benefit of the industries to use the International Treaties like Madrid Protocol, PCT etc.?

  • Does your company used any of the International Treaty to register its IP rights?


Consideration of the results contd19

IPO-Pakistan

Consideration of the Results (contd.)

  • Which International Treaties are used by your company to register its IP rights?

  • Do you know what is Madrid Protocol for the International Registration of Marks?

  • Paris Convention;

  • Patent Cooperation Treaty;

  • Madrid Protocol.


Consideration of the results contd20

IPO-Pakistan

Consideration of the Results (contd.)

  • Does your company used Madrid Protocol for the International registration of its marks?

  • What do you think that Madrid Protocol is beneficial for your company?


Consideration of the results contd21

IPO-Pakistan

Consideration of the Results (contd.)

  • What are the benefits that your company have by using the Madrid Protocol?

  • Is the Government of Japan received your company views before acceding to Madrid Protocol?

  • Simple procedure;

  • Cost effective; and

  • Subsequent designation.


Consideration of the results contd22

IPO-Pakistan

Consideration of the Results (contd.)

  • Did your company receive any kind of capacity building and awareness programs from the Government of Japan?

  • Does your company ever used the route of Madrid Protocol for registering its marks abroad?


Consideration of the results contd23

IPO-Pakistan

Consideration of the Results (contd.)

  • What are the difficulties that are faced by your company in using the Madrid Protocol?

  • Is the fee structure for the international registration of a mark via Madrid Protocol is acceptable to your company?

  • Understanding of the system;

  • Explanation of designated goods/services;

  • Submission of “Record of Use”; and

  • International application is based on domestic application/registration.


Consideration of the results contd24

IPO-Pakistan

Consideration of the Results (contd.)

  • Is the conventional way of registering the marks by Paris Convention is better than the Madrid Protocol?

  • Why the Paris Convention route is better than the Madrid Protocol route?

  • Paris Convention is simpler for small number of applications; and

  • It has more proven records.


Consideration of the results contd25

IPO-Pakistan

Consideration of the Results (contd.)

  • Do you have some know how about the provision of “Central Attack” in the Madrid Protocol?

  • What do you think whether the provision of “Central Attack” is acceptable to your company or not?


Consideration of the results contd26

IPO-Pakistan

Consideration of the Results (contd.)

  • Why the provision of “Central Attack is not acceptable to your company”?

  • The provision of “Central Attack” is not acceptable to our company due to a negative impression of having loss.


Consideration of the results contd27

IPO-Pakistan

Consideration of the Results (contd.)

Hypothesis No. 4:(contd.)

Upshot of the Interviews of Trademark Attorneys:

  • Interviews of two Trade Mark Attorneys are conducted that are practicing Madrid Protocol in Japan in order to know their point of view about Madrid Protocol:

    • Both the Attorneys are of the view that Madrid Protocol has more flexible provisions and more easy procedures as compared to the Madrid Agreement;

    • Both the Attorneys are of the view that Contracting Organizations are made eligible to file an international application in order to broaden the scope of the system;


Consideration of the results contd28

IPO-Pakistan

Consideration of the Results (contd.)

Hypothesis No. 4:(contd.)

  • In view of the first Attorney, the main disadvantage of Madrid Protocol is the provision of “Central Attack” whereas the second Attorney is of the view that the main disadvantage of Madrid Protocol is that the burden of the Patent Office will increase;

  • Both the Attorneys are of the view that MM18 form is submitted along with MM2 form when US is designated because it is the requirement of its national legislation and MM17 form is submitted along with MM2 form, if the applicant has any “Claim of Seniority” in the countries of the European Community;

  • Both the Attorneys are of the view that the submission of different forms like MM18 form with MM2 form is against the harmonization of the system. However, at this stage each country’s national law is different and individual requirements will decrease, when laws of each country are harmonized;

  • Both the Attorneys are of the view that no supplementary and complementary fees are payable when the applicant designates a Contracting Party that fix its own Individual Fee. But, when the Contracting Party requires additional fee for additional classes, the supplementary fee fixed by that Contracting Party for each additional class must also be paid;


Consideration of the results contd29

IPO-Pakistan

Consideration of the Results (contd.)

Hypothesis No. 4:(contd.)

  • Both the Attorneys are of the view that the applicant will pay the Individual Fee directly to the International Bureau of WIPO;

  • Both the Attorneys are of the view that the applicant will pay the Supplementary and Complementary Fees directly to the International Bureau of WIPO;

  • Both the Attorneys are of the view that the Individual Fee fixed by a Contracting Party may not be higher than the equivalent amount which the assumed Contracting Party will receive from an applicant for a ten year registration or from the holder of a registration for a ten year renewal of that registration;

  • In view of the first Attorney, if the local fee for domestic Trade Mark filing is too expensive than the fees required for the international registration of a Mark then such kind of discrepancy can be remedied by fixing an Individual Fee whereas in view of the second Attorney, if the official fee is less than the complementary fee then the Contracting Party should not fix its own Individual Fee and vice versa;


Consideration of the results contd30

IPO-Pakistan

Consideration of the Results (contd.)

Hypothesis No. 4:(contd.)

  • Both the Attorneys are of the view that the application will be translated by the International Bureau of WIPO in case where the Office of Origin is using French language and the designated Contracting Party is using English or Spanish language, as the case may be;

  • In view of the first Attorney, the International Registration is dependent on the basic application or registration for the first 5 years probably due to the Article 6quinqies of the Paris Convention whereas in view of the second Attorney this provision comes forward from the Madrid Agreement but the Attorney does not know the reason that why this provision of “Central Attack” is carried forward in the Madrid Protocol;

  • Both the Attorneys are of the view that the Japanese clients enquire about the fees, time and procedure of international registration of a Mark filed through Madrid Protocol. In addition to this, the clients are very much concerned about the description of goods and services;

  • Both the Attorneys have described almost similar practices and processes to handle the international applications filed through Madrid Protocol;


Consideration of the results contd31

IPO-Pakistan

Consideration of the Results (contd.)

Hypothesis No. 4:(contd.)

  • Both the Attorneys are of the view that the description of goods and services in the international application is a difficult task for the Attorneys because every Contracting Party has its own interpretations of goods and services;

  • In view of the first Attorney, there is a reduction in the revenues of the Patent firms in Japan after acceding to the Madrid Protocol whereas in view of the second Attorney there is no impact of Madrid Protocol on the revenues of the Patent firms in Japan especially SHIGA International Patent Office;

  • Both the Attorneys are of the view that Madrid Protocol is a very effective system for the Industries because it provides an easy way to protect and manage their IP rights around the globe;

  • Both the Attorneys are of the view that the small and medium enterprises will benefit from the Madrid Protocol because the cost is low and the procedures are much simpler as compared to Paris Convention route;


Consideration of the results contd32

IPO-Pakistan

Consideration of the Results (contd.)

Hypothesis No. 4:(contd.)

  • The first Attorney is of the view that this question may better be asked to JPO but the second Attorney is of the view that the most important implication that an Office of Origin will face after accession to Madrid Protocol is the difference between domestic applications and the Madrid Protocol applications. In addition to it, the Office of Origin will have to work in English, French or Spanish language;

  • Both the Attorneys are of the view that a country should accede to Madrid Protocol because it will facilitate its industry especially SMEs to expand their businesses; and

  • In view of the first Attorney, Japanese are still using the Paris Convention route more as compared to the Madrid Protocol route due to the provision of “Central Attack” whereas the second Attorney is of the view that this is because of the fact that there is very less membership from the Asian countries in the Madrid Protocol and the Japanese Companies have already registered their Marks via Paris Convention route.


Consideration of the results contd33

IPO-Pakistan

Consideration of the Results (contd.)

Hypothesis No. 5:

Corollary of the Questionnaire to Japan Patent Office and Interview of the Officials of Japan Patent Office:

  • On the basis of questionnaire and interview, the following five parameters are taken in to consideration:

    • Staff Strength and Workload Analysis;

    • Capacity Building Requirements of the Staff;

    • Awareness and Support Measures;

    • Automation Requirements; and

    • Views of the Stakeholders.


Consideration of the results contd34

IPO-Pakistan

Consideration of the Results (contd.)

Hypothesis No. 5:(contd.)

  • Staff Strength and Workload Analysis;

    • The total staff strength of JPO is 2900. Out of this 1680 are Patent Examiners, 52 are Design Examiners, 149 are Trade Mark Examiners, 386 are Appeal Examiners and 633 are Clerical Staff;

    • The International Trade Mark Application Office of JPO deals with the international applications filed via Madrid Protocol;

    • The staff strength of International Trade Mark Application Office of JPO is 12;

    • The Trade Mark Examiners for examining Madrid Protocol applications are separate from the Trade Mark Examiners that examines the domestic applications of marks;

    • There are 28 Trade Mark Examiners for examining the international applications filed through Madrid Protocol;


Consideration of the results contd35

IPO-Pakistan

Consideration of the Results (contd.)

Hypothesis No. 5:(contd.)

  • The number of applications that are examined by each Examiner for Madrid Protocol in the year 2006 is 293;

  • Whereas, the number of domestic applications examined by each examiner in the year 2006 is 936 approximately;

  • This difference in workload is due to the fact that the applications filed through Madrid Protocol are in English;

  • The appeals against the Trade Mark Examinations are handled by the 35th to 38th Boards of Appeal;

  • There are 11 Appeal Examiners that deals with the appeals of Trade Mark applications filed via Madrid Protocol; and

  • The number of appeals and inter-parties trials that are handled by each appeal examiner for Madrid Protocol applications in the year 2007 is 14.


Consideration of the results contd36

IPO-Pakistan

Consideration of the Results (contd.)

Hypothesis No. 5:(contd.)

  • Capacity Building Requirements of the Staff;

    • There are only three Official languages of Madrid Protocol i.e., English, French and Spanish;

    • The most significant problem faced by JPO after accession to Madrid Protocol is language because domestic language is different from the Official languages of Madrid Protocol;

    • Japan Patent Office always encourages its officers to attend the English language courses run by National Centre for Industrial Property Information and Training (INPIT); and

    • Furthermore, officers that are dealing with Madrid Protocol applications receives briefings on the summary, rules and practical work related to Madrid Protocol from well experienced officers.


Consideration of the results contd37

IPO-Pakistan

Consideration of the Results (contd.)

Hypothesis No. 5:(contd.)

  • Awareness and Support Measures;

    • JPO distributes Madrid Protocol related pamphlets through local intellectual property related institutions;

    • JPO has organized four seminars at four different places of Japan in the fiscal year 2007 in order to create awareness among the public about Madrid Protocol;

    • JPO also co-operates with the local intellectual property related institutions to hold lectures (on their request) for dissemination of IP related information; and

    • However, no support measure is provided by JPO to SMEs of Japan because there is no such feed back from the users of Madrid Protocol is received by the Japan Patent Office.


Consideration of the results contd38

IPO-Pakistan

Consideration of the Results (contd.)

Hypothesis No. 5:(contd.)

  • Automation Requirements;

    • No particular automation is required in connection with the work of International Trade Mark Application Office both as an Office of Origin and as a designated Contracting Party;

    • In JPO, E-Filing is available for the domestic applications but there is no E-Filing is available for the international applications filed through Madrid Protocol;

    • The paperless environment is not yet extended to the International Trade Mark Application Office of JPO; and

    • The means of communication between JPO and WIPO is through paper documents, facsimile, telephone and e-mail. JPO also uses electronic dispatching by using a File Transfer Protocol (FTP) server.


Consideration of the results contd39

IPO-Pakistan

Consideration of the Results (contd.)

Hypothesis No. 5:(contd.)

  • Views of the Stakeholders;

    • In 1997, Japan Patent Office has conducted an opinion survey covering 760 domestic corporations to know their point of view before acceding to Madrid Protocol; and

    • In addition, Japan Patent Office has also requested the Industrial Property Council which consists of representatives from patent attorneys, enterprises and other organizations to deliberate on joining the Madrid Protocol.


Recommendations

IPO-Pakistan

Recommendations

Hypothesis No. 1:

  • The domestic Trade Marks legislation must be amended in line with the provisions of the Madrid Protocol;

  • A new Chapter of Madrid Protocol may be added in the domestic Trade Marks law;

  • The rules for the international registration of Marks through Madrid Protocol may be incorporated in the existing rules or separate rules may be prepared; and

  • The legislation of Singapore is simpler as compared to the legislations of Japan and United States of America for giving effect to the provisions of Madrid Protocol in the respective countries.


Recommendations contd

IPO-Pakistan

Recommendations (contd.)

Hypothesis No. 2:

  • Awareness and capacity building of small and medium enterprises is necessary for the maximum utilization of Madrid Protocol;

  • Seminars should be arranged in all the Chambers of Commerce and Industry to disseminate the information of Madrid Protocol;

  • Surveys should be conducted to know the point of view of the small and medium enterprises and other stakeholders before acceding to Madrid Protocol; and

  • There should be an Intellectual Property Training Centre at the national level who has the capacity to educate all the persons that are related to the field of IP.


Recommendations contd1

IPO-Pakistan

Recommendations (contd.)

Hypothesis No. 3:

  • The Fees for the international registration of a Mark should be reduced for the developing countries to widen the scope of the system;

  • The Government of a developing country may provide some kind of financial assistance to the SMEs for facilitating them to register their Marks abroad; and

  • The country who wants to accede to Madrid Protocol may fix its own Individual Fee as most of the members of Madrid Protocol receive an Individual Fee instead of receiving a share from the supplementary and complementary fees from WIPO.


Recommendations contd2

IPO-Pakistan

Recommendations (contd.)

Hypothesis No. 4:

  • Acquisition of intellectual property rights is very important for a small and medium enterprise to grow;

  • The maintenance of IP Profile on the websites of the companies will help them to win the trust of the clients;

  • Patents, Trade Marks and Industrial Designs are the most important IP forms for the development of an SME;

  • The registration of Marks through Madrid Protocol is far more easier as compared to the Paris Convention;

  • Every company should establish a separate IP department for the management of its IP rights;

  • The staff of the IP department must be well conversant with the domestic registration procedures of different forms of IP as well as with the international treaties for the registration of IP rights in the world;


Recommendations contd3

IPO-Pakistan

Recommendations (contd.)

Hypothesis No. 4:(contd.)

  • The international treaties can play an important role in the growth of the local industry provided that the local industry is well aware of the importance of their IP rights;

  • The fee structure of Madrid Protocol may be acceptable for the SMEs of a developed country but it is higher for the SMEs of a developing country;

  • The requirement of different countries for the registration of a Mark should be harmonized in order to facilitate the user of the system;

  • The description of goods and services in the international application is the most difficult task because every country has its own interpretation of the goods and services although they are following the Nice Classification of Goods and Services; and

  • The problem of description of goods and services is also becomes more significant due to difference in the language of Madrid Protocol (English, French or Spanish) with that of the national language of the Country.


Recommendations contd4

IPO-Pakistan

Recommendations (contd.)

Hypothesis No. 5:

  • There should be a separate section in the Trade Marks Registry that deals with the international applications filed through Madrid Protocol;

  • The Trade Mark Examiners for international applications filed through Madrid Protocol should be separated from the Trade Mark Examiners dealing with the domestic applications;

  • Capacity Building of the Trade Mark Examiners dealing with the international applications in terms of the rules and regulations of Madrid Protocol, language, computer literacy etc. is necessary before acceding to Madrid Protocol;

  • There should be no back log in the Trade Marks Registry in order to reduce the chances of failure of the system;

  • E-Filing is not a pre-requisite for acceding to Madrid Protocol but it facilitates the applicants to use the system;

  • The Trade Marks Registry should have an effective system of electronic communication with the International Bureau of WIPO;

  • Madrid Protocol will work more efficiently in Post- Registration Opposition system as compared to Pre-Registration Opposition system.


Analysis on the impact of madrid protocol for the economies of developing countries

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