Trademarks are territorial in nature. The territorial nature of a trade mark means that trade mark rights are limited to the country where they have been granted. A trade mark registration does not give the owner of the worldwide mark protection but rather a protection in individual/specific territories where the trade mark is granted. A trade mark owner in one country has the right to control the use of the trade mark on products in that country.
However, if those products are offered for sale in a country where the owner does not have the trade mark rights, like through an online marketplace accessed worldwide, it may infringe the rights of the trade mark owner in a different country.
Therefore, one of the most challenging aspects of protecting a trademark in the world today is protecting the trademark internationally. Because there is no simple way to ‘globally’ register a trademark in every country, a trademark owner must register its trademark rights in every country where it seeks protection.
One way such a problem can be resolved is by getting an International Registration of a Trademark through the Madrid Protocol. Through this International Registration, the owner of the trademark can register the trademark in multiple countries, all at once, through one single application. However, registration through the Madrid Protocol will be available only in countries that are the contracting parties or signatories to the Madrid Protocol.
International Registration of Trademark under the Madrid System
The Madrid Protocol, an international treaty, has been in force since April 1, 1996, and has become a convenient and economical means of securing trademark registration in member countries. The Madrid Protocol is an effective system of international registration of marks administered by the International Bureau (IB) of the World Intellectual Property Organization (WIPO). Pakistan joined Madrid Protocol on 24th February 2021 and ratified it on 24th May 2021. Pakistan will receive Trademark applications under Madrid Protocol from 24th May 2021.
The Madrid Protocol is a part of the Madrid System. The members of the Madrid system form a Madrid Union. Three official languages are used for the Madrid Protocol, i.e. English, French, and Spanish, and the currency for submission of the fee is Swiss Francs. The applicant can file one application in one language and pay a fee in a single currency instead of filing separate applications in different trademark offices in a foreign language and another currency.
An applicant can forward the international application to the International Bureau (IB) of WIPO through the Trademarks Registry, Karachi, as the Office of Origin (OO). The Office of Origin after formal examination, forwards the international applications to IB of WIPO.
IB formally examines such international application and allow them to publish in the international gazette of WIPO. After publication, the mark is forwarded to designated countries for substantive examination according to their national laws. The selected countries can accept or refuse marks for registration within 12 or 18 months according to their national regulations; otherwise, marks will be considered registered marks.
An international registration remains dependent on the registered or applied mark in the Office of Origin for five years from the date of its registration. International registration is no longer protected if the essential registration ceases to have an effect within this five-year (central attack).
An international registration remains valid for ten years from the date of its registration and it may be renewed further by paying the prescribed renewal fee before the expiry of every 10 years.
Subsequent changes in the international registration, such as a change in name /or address of the applicant/holder, a (total or partial) change in ownership of the applicant/holder or a limitation of the list of goods and services in respect of all or some of the designated Contracting Parties, may be recorded and have effect by means of a single procedure with the International Bureau (IB) along with the payment of prescribed fee.
After accession to the Madrid Protocol, the Trade Marks Registry (TMR), Karachi will have two kinds of tasks-
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As an Office of Origin (OO)
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As an office of the designated Contracting Party (CP)
How to apply for International Registration from Pakistan?
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Trade Mark Registry (TMR) of IPO-Pakistan will receive International Applications,
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TMR will verify international applications and whether the application conforms with the provisions of the Madrid Protocol. If applications meet the requirements of the Madrid Protocol, OO will certify and transmit such applications to the International Bureau of WIPO,
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Suppose the International Bureau of WIPO finds any irregularity in any International Application transmitted from the TMR. In that case, it notifies such irregularities to the applicant (or his representative) and the TMR. The applicant is required to correct the irregularities. The TMR will respond to notification of irregularities by the International Bureau,
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Suppose the essential registration or the basic application ceases to exist within five years from the international registration date. In that case, the TMR will communicate the same to the International Bureau of WIPO.
Requirements for Filing International Applications through the Office of Origin (OO)
The applicants who wish to file an application for international registration of a trademark under the Madrid Protocol in Pakistan must be able to meet one of the following three standards;
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The applicant must be a national of Pakistan, or
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The applicant must be domiciled in Pakistan, or
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The applicant must have a natural and effective business or commercial establishment in Pakistan.
Along with all the above mentioned standards, the applicant must also have a national trade mark application filing number or registration number of a trademark with the Trade Marks Registry, Karachi. This national mark will be used as the basis of the international application. The international application will have the same trade mark as mentioned in the national trade mark application or registration, and the list of goods and services mentioned in the international application should be the same as the basic mark. The applicant in the international application can designate more than one other member country of the Madrid Protocol, where the applicant intends to protect his mark.
The International Application must be submitted on form MM 2 as per the instructions attached in addition to that, Paper form, Email or Madrid E-filing. A gateway for submitting MM2 has been provided at the official website of IPO Pakistan or WIPO’s website.
After getting the international registration of the trademark, the trademark shall be protected in all the desired countries, thus allowing ease of business and protection against all sorts of infringement of the intellectual property rights of the trademark owner.
