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What does the Madrid Protocol do?
An international agreement called the Madrid Protocol (the Protocol) entered into force on 1 April 1996 and has become a convenient and economical means of securing trademark registration in member countries. The Madrid Protocol is an efficient Madrid system of international registration of numbers administered by the International Bureau (IB) of the World Intellectual Property Organization (WIPO).
Speaking of Pakistan, it formally acceded to the Madrid System on 24 February 2021 and ratified it on 24 May 2021. This means that trademark holders can apply for protection in 124 countries by filing one application and paying one set of fees. In addition to the same system, applicants can modify, update or expand their global trademark portfolio through a centralized system.
Pakistan became the 108th member of the Madrid System. Now trademark applications under the Madrid Protocol are being received in Trade Marks Registry of Pakistan from May 24, 2021. And now this system has been implemented in Pakistan.
Applicants for international registration must meet one of the following three criteria:
- Applicant must be a citizen of Pakistan
- It is necessary for the applicant to be resident in Pakistan
- It is also important for the applicant to have a genuine and effective business or commercial establishment in Pakistan.
Madrid Protocol countries 2022:
The following countries are member countries of the Madrid Protocol:
Applicants may apply to the following countries that are members of the Madrid Protocol.
- Afghanistan
- African Intellectual Property Organization (OAPI)
- Albania
- Algeria
- Antigua & Barbuda
- Armenia
- Australia
- Austria
- Azerbaijan
- Bahrain
- Belarus
- Benelux
- Bhutan
- Bonaire, Saint Eustatius and Saba
- Bosnia and Herzegovina
- Botswana
- Brazil
- Brunei Darussalam
- Bulgaria
- Cambodia
- Canada
- China
- Colombia
- Croatia
- Cuba
- Curaçao
- Cyprus
- Czech Republic
- Denmark
- Egypt
- Estonia
- Eswatini (formally called Swaziland)
- European Union
- Finland
- France
- Gambia
- Georgia
- Germany
- Ghana
- Greece
- Hungary
- Iceland
- India
- Indonesia
- Iran
- Ireland
- Israel
- Italy
- Japan
- Kazakhstan
- Poland
- Portugal
- Kenya
- Kyrgyzstan
- Laos
- Latvia
- Lesotho
- Liberia
- Liechtenstein
- Lithuania
- Madagascar
- Malawi
- Malaysia
- Liberia
- Liechtenstein
- Lithuania
- Madagascar
- Malawi
- Malaysia
- Mexico
- Moldova
- Monaco
- Mongolia
- Montenegro
- Morocco
- Mozambique
- Namibia
- New Zealand
- North Korea
- North Macedonia
- Norway
- Oman
- Pakistan (from 24 May 2021)
- Philippines
- Romania
- Russian Federation
- Rwanda
- São Tomé and Principe
- Serbia
- Sierra Leone
- Singapore
- Sint Maarten
- Slovakia
- Slovenia
- South Korea
- Spain
- Sudan
- Sweden
- Switzerland
- Syria
- Tajikistan
- Thailand
- Trinidad and Tobago
- Tunisia
- Turkey
- Turkmenistan
- Ukraine
- United Kingdom
- United States of America
- Uzbekistan
- Vietnam
- Zambia
- Zimbabwe
International Trademark Filing Process:
Filing by Office of Origin:
Applicants for international registration must meet one of the following three criteria:
- Applicant must be a citizen of Pakistan
- It is necessary for the applicant to be resident in Pakistan
- It is also important for the applicant to have a genuine and effective business or commercial establishment in Pakistan.
Along with all the above criteria, the applicant must also have a national trademark filing number or a trademark registration number with the Trademark Registry of Pakistan. This National Trademark will use as the basis for an International trademark filing.
The international application must contain the same trademark as that mentioned in the national application or trademark registration. In this case, the list of goods and services mentioned in the international application must be identical to the base mark.
In an international application, the applicant may designate more than one Member State of the Madrid Protocol if the applicant wishes to international trademark filing. The international application must file on Prescribed Form or through an electronic filing under the Madrid System.
How can we help you?
We can definitely handle the application process for you and make it easy for you.
First, a Madrid application must file with the trademark office (“Office of Origin”) of the applicant’s country/territory. Actually, the “home” application or registration is the base for filing the international application. then verifies the details of the applicant’s home application or registration and forwards the application to the World Intellectual Property Organization.
In addition, 3 languages can be selected for the application: English, French or Spanish, and any member countries/territories can be specified (except the country/territory of the applicant, as this is the applicant’s home application or registration is not part of it. the subject matter, on which the international application (registration) is based.
WIPO Global Brand Database:
A trademark search through the Global Brand Database helps you find trademarks registered under the Madrid system, appeals of origin registered under the Lisbon system, and marks protected under the Paris Convention 6ter.
Madrid Protocol Trademark Filing:
As the International Bureau (IB) receives a Madrid Protocol trademark application, it evaluates whether it complies with the Madrid Protocol and its general principles. This verification is limited to formal verification, including classification and listing of goods or services. If no infringement is found, the International Bureau records the mark in the International Register, publishes the international registration in the WIPO Gazette of International Marks, and notifies each designated Contracting country.
How will WIPO conduct the examination?
Step 1:
If Application Submit through Office of Origin:
Having first applied or registered a domestic mark at your home office, you can file an international application under the Madrid system. This application must file to your home office, which will verify it and then submit it to WIPO.
Step 2:
WIPO will Formal Check:
WIPO only conducts formal reviews. If there are no problems, the international registration is registered and the details are sent to each of the offices of the member countries/territories named in the international application. Please also note that the registration of an international registration by the International Bureau does not in itself confer protection in the designated countries/territories.
Step 3:
Substantive Review by each Regional Office:
After your mark is entered in WIPO’s International Register, it notifies all the Offices of the Members you named in the international application.
Each designated Contracting Party’s office carries out an important examination of the mark that is the subject of your international registration, as it examines national/territorial applications in accordance with its own national laws.
The scope of protection is decided within 12 months (or 18 months for some Members) of the date of notification of the designation to the WIPO Office.
Pakistan Origin Office in the Madrid System:
International applications submit to Trademark Registry (TMR) IPO-Pakistan. Thereafter application will be examined for compliance with the provisions of the Madrid Protocol. If the applications have no objections and comply with the requirements of the Madrid Protocol. The Office of Origin certifies and submits such applications to the International Bureau of World Intellectual Property Organization (WIPO).
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Table of Contents:
Ans. Essentially, you should apply for an international trademark as soon as possible after your main application with the Intellectual Property Organization of Pakistan has been filed. You are then free to apply for registration in any other country.
Ans. Yes, the applicant must first apply for the trademark in Pakistan/local territory. Furthermore, the existence of international registration is conferred on local registration, so if the underlying registration is canceled or ceases to be valid, the international registration is automatically canceled.
Ans. A “single” application means that it refers to an international application in which the applicant can choose from more than 123 countries in which to register his trademark at a given point in time. The procedure for adding additional jurisdictions is governed by the Intellectual Property Organization (IPO) Rules.
Ans. This system is more beneficial to applicants as it is a cost-effective trademark protection mechanism, however, export-oriented businesses and small businesses will greatly benefit from this system.
Ans. Yes, of course, if your brand or trademark is being used and proposed to be used in contracting countries.
Of course yes, in order to assess the chances of success in individual countries and/or respond to any objections raised by individual countries, it is advisable to seek legal advice.