Understanding Pakistan's Accession To The Madrid System

04 March 2021

By Ali & Associates

Please note that the Rules & Regulations pertaining to the accession of Madrid System and its implementation is awaited by the Intellectual Property Organization and we will provide a more in-depth analysis once the same becomes available.

Madrid System is an international central trademark filing system which facilitates the registration of a trademark in multiple jurisdictions by establishing World Intellectual Property Organization (WIPO) as a central supervisory body. The Madrid System enables the local Trademark Registry to accept requests by local applicant’s to file registration in desired jurisdictions at a charge of a fairly reasonable administrative fees, subject to the prior filing of their trademark in Pakistan.

Therefore, the basic premise of the System is to provide a one window service, through WIPO, facilitating the filing/registration, maintenance, revisions and renewal of a given trademark in multiple jurisdictions thereby eliminating the need to approach individual offices of desired countries.

FILING PROCEDURE FOR INTERNATIONAL APPLICATION UNDER MADRID

1. International application mentioning the country(s) of interest along
with International filing fee to be submitted before the Trade Marks Registry.

2. Trademarks Registry to certify the International application and forward it to WIPO.

3. WIPO to conduct formal examination and if complied, the mark is entered in the international Register and a Certificate (IRN) is issued and mark published in the International Gazette.

4. WIPO forwards the International Application to the designated country(s) and each designated country shall conduct its substantive examination in accordance with local laws within a stipulated period.

5. The designated country shall either accept or reject the IRN and if such conclusion is reached within the time stipulated, the mark shall be considered as registered.

FREQUENTLY ASKED QUESTIONS

1. When can I apply for International Registration under Madrid?

As soon as the Rules are promulgated and implemented by the Intellectual Property Organization of Pakistan. Until then, any registration sought in a foreign country shall be filed independently.

2. Is local/basic application mandatory for filing International Registration under Madrid?

Yes, it is absolutely essential that the Applicant has applied for the registration of trademark first in Pakistan/locally. Moreover, the subsistence of the international registration is incumbent on the local registration therefore, if the primary registration is cancelled or ceases to have effect, then the international registration will automatically be negated.

3. What does it mean to file a ‘single’ application?

The term ‘Single’ application is referred to the International Application wherein the Applicant can select from over 123 countries to register its trademark therein, at a given time. The procedure of addition of further jurisdictions shall be governed by the Rules from IPO.

4. Who will benefit from the Madrid System?

Almost all Applicants benefit from the System as it introduces a cost effective mechanism for the protection of Trademarks however, export oriented businesses and small businesses shall greatly benefit from the System.

5. Do I need to apply for a registration under Madrid?

Yes, if your brand/trademark is being used and/or proposed to be used in contracting countries.

6. Will I need a lawyer to file International Application?

Yes, in order to evaluate the chances of success in selected countries and/or to counter any objections raised by selected countries, it is recommended that legal advice be sought.