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ANALYSIS ON THE IMPACT OF MADRID PROTOCOLFOR THE ECONOMIES OF DEVELOPING COUNTRIES
IPO-Pakistan
Asfand AliAssistant Director
IPO-Pakistan(September 24, 2008)
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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
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What is Madrid System
Madrid System is for the International Registrationof 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.
IPO-Pakistan
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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:
IPO-Pakistan
Paris Convention Madrid ProtocolThe application is filed in many offices. The application is filed in the Office of Origin.
The application is filed in the local language. The application is filed in one language (E,F,S).
The application fee is paid in the local currency. The application fee is paid in one currency (Sfr).
It have registrations in many countries. It has only one international registration.
It have renewals in many countries. It has only one renewal.
It need services of a local Agent. It needs services of a local agent only if refused.
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Brief Introduction of Madrid Protocol (contd.)
The difference between the two procedures can
be illustrated with the following representations:
IPO-Pakistan
Madrid Protocol
Paris Convention
Country-3
Country-2
Country-1
International
Bureau of
WIPO
Country-1
Country-2
Country-3
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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 informthe IB of WIPO within the prescribed time period,
the Mark will deemed to be registered in that
Contracting Party.
IPO-Pakistan
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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
IPO-Pakistan
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Abstract of the Research
The study is based on the Impact of Madrid Protocol forthe Economies of Developing Countries. In this aspect,different parameters are studied which can play animportant role for Developing Nations before acceding toMadrid Protocol. These parameters includes thefollowing:
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 Markthrough Madrid Protocol;
Strategy of the Japanese Companies with emphasis
on Small and Medium Enterprises to utilize the MadridProtocol; and
Operating System of Japan Patent Office (JPO) forhandling the International Applications filed viaMadrid Protocol both as an Officeof Originand as aDesignatedContracting Party.
IPO-Pakistan
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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 MadridProtocol 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. IPO-Pakistan
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Formulation of Hypotheses (contd.)
Hypothesis No. 2:
Background:
Most of the Industries in Pakistan consist of Smalland Medium Enterprises that are not well aware of
the importance of Registration of Trade Marks atNational and International Levels.
Hypothesis:
Capacity Building of the SME sector of Pakistan tounderstand the importance of Registration of Trade
Marks through Public Awareness Campaigns.Methodology:
Study of the Public Awareness Strategy andSupport for Small and Medium Enterprises in Japan.
IPO-Pakistan
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Formulation of Hypotheses (contd.)
Hypothesis No. 3:
Background:
The SME sector of Developing Countries is financiallynot so strong to afford the fees for the International
Registration of Marks through Madrid Protocol.Hypothesis:
Financial Support to the SME sector for theInternational Registration of Marks via Madrid Protocol.
Methodology:
Comparison of the fees of National Registration of aMark in Pakistan with the fees of InternationalRegistration of a Mark through Madrid Protocol.
IPO-Pakistan
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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.
IPO-Pakistan
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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.IPO-Pakistan
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Consideration of the Results
Hypothesis No. 1:
Consequence of the Comparison of the CommonProvisions of Madrid Protocol in the National TradeMarks Legislations of Japan, Singapore and USA:
In my point of view there is no need of amendment inthe existing National Trade Marks Law because eachContracting Party has to examine the applicationaccording to its own National Legislation;
Rather, there is a need to include an additionalchapter to the existing National Law in order to giveeffect to the provisions of Madrid Protocol just like inthe legislations of Japan, Singapore and USA;
IPO-Pakistan
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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 thefollowing two ways:
The domestic Trade Marks legislation may be
amended in line with the provisions of the MadridProtocol; or
A new chapter may be incorporated in the domesticTrade Marks legislation to register the internationalapplications of Marks filed through Madrid Protocol.
IPO-Pakistan
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Consideration of the Results (contd.)
Hypothesis No. 2:
Effect of the Awareness Strategy for Smalland Medium Enterprises in Japan:
Japan Patent Office has implemented the following activities for thedevelopment of human resource in the field of IP:
Programs for elementary schools, junior high schools, high schools,universities, adults in general, researchers, entrepreneurs includingSMEs and experts;
Explanatory meetings to the persons who are involved in intellectualproperty matters;
Seminars and Trainings for SMEs and Venture Companies;
Training seminars for fostering Patent Licensing Experts;
The Regional Headquarters for Intellectual Property Strategy in eachregion implement measures for raising the awareness level of SMEsand 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 promotingutilization of Industrial Property rights; and
Distribution of a Compendium of examples of Patent Utilization.
IPO-Pakistan
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Consideration of the Results (contd.)
Hypothesis No. 2: (contd.)
Effect of the Support Measures for Smalland Medium Enterprises in Japan:
The various support measures taken by the Japan Patent Office for small andmedium enterprises of Japan are elaborated as under:
Consultation services on Industrial Property rights;
Intellectual Property specialists to provide support to SMEs in terms ofconsultations, raising awareness and developing human resources in localareas;
Free individual consultation services by experts;
Support for Regional IP Advisory Counters established at Chambers ofCommerce 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. IPO-Pakistan
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Consideration of the Results (contd.)
Hypothesis No. 3:
Outcome of the Comparison of Fees of DomesticRegistration of a Mark in Pakistan with the Fees ofInternational Registration of a Mark via Madrid Protocol:
In Pakistan, the fees required for the domestic registration of aMark 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 beyondthree classes) and a Complementary Fee (73 Swiss Francs) orif a Contracting Party has fixed its own Individual Fee then theapplicant has to pay the Basic Fee and the Individual Fee fixedby that Contracting Party;
IPO-Pakistan
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Consideration of the Results (contd.)
Hypothesis No. 4:
Upshot of the Questionnaire
to Japanese Companies:
A questionnaire is circulated toalmost 100 JapaneseCompanies particularly SMEs.Out of 100, replies of 23
companies are received andthe analysis of these replies isrepresented in the form of piecharts as under:
IPO-Pakistan
A, 21
B, 400
C, 1024
D, 400
E, 175
F, 330
G, 15
H, 280
I, 145
J, 215
K, 1400
L, 8
M, 1073
N, 1794
O, 324
P, 230
Q, 627
R, 150
S, 220
T, 1176
U, 550
V, 876
W, 550
A B C D E F G H I J K L M N O P Q R S T U V W
Number of
Employees
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Consideration of the Results (contd.)
IPO-Pakistan
100%
0%
Yes No
4% 4%
4%
13%
75%
< 5 < 10 < 15 < 20 100-300
What do you think thatIPRs are beneficial for a
company?
How many IPRs areowned by your company?
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Consideration of the Results (contd.)
IPO-Pakistan
49%
30%
11%
6% 4%
Patents Trade Marks Industrial Designs Uti li ty Models Copyrights
Which is the mostimportant IPR for an
SME to grow?
Does your company hasits own website?
91%
9%
Yes No
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Consideration of the Results (contd.)
17%
83%
Yes No
IPO-Pakistan
Does your company hasgiven its IP Profile on
the website?
Does Trade Marks areplaying a key role in
growing the business of
your company?
91%
9%
Yes No
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Consideration of the Results (contd.)
22%
0%
4%
13%61%
< 5 < 10 < 15 < 20 50-200
IPO-Pakistan
What are the number ofTrade Marks that are
owned by your company?
Does the number of TradeMarks owned by your
company will increase in
future?
83%
17%
Yes No
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Consideration of the Results (contd.)
78%
22%
Yes No
IPO-Pakistan
Does your companyregistering its Trade Marks
in foreign countries?
What are the number ofTrade Marks that are
registered abroad by your
company?
22%
4%
0%
4%
70%
< 5 < 10 < 15 < 20 25-75
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Consideration of the Results (contd.)
35%
9%
9%13%
17%
17%
< 5 < 10 < 15 < 20 > 20 No Reply
IPO-Pakistan
What is the number of
countries in which yourcompany has registered
its Trade Marks?
Does Trade Marks are
registered abroad byParis Convention route or
Madrid Protocol route?
40%
30%
13%
17%
Pari s Conventi on Madri d Protocol Both No Repl y
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Consideration of the Results (contd.)
49%
0%4%0%
17%
30%
< 5 < 10 < 15 < 20 20-60 No Reply
IPO-Pakistan
What are the number of Trade Marks that are registered inforeign countries by your company before and after the
accession of Japan to Madrid Protocol?
Before Accession to Madrid Protocol After Accession to Madrid Protocol
52%
9%
4%
0%
13%
22%
< 5 < 10 < 15 < 20 > 20 No Reply
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Consideration of the Results (contd.)
34 %
9%
9%9%
17 %
22 %
< 5 < 10 < 15 < 20 > 20 No Reply
IPO-Pakistan
What are the number of countries in which your companyhas registered its Trade Marks before and after the
accession of Japan to Madrid Protocol?
Before Accession to Madrid Protocol After Accession to Madrid Protocol
52%
0%9%
0%
13%
26%
< 5 < 10 < 15 < 20 > 20 No Reply
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Consideration of the Results (contd.)
74%
0%
26%
Trade Mark Agent Company It sel f No Repl y
IPO-Pakistan
How your company files an application for Trade Marksregistration in foreign countries?
Paris Convention Madrid Protocol
48%
0%
52%
Trade Mark Agent Company Itsel f No Reply
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Consideration of the Results (contd.)
96%
4%
Yes No
IPO-Pakistan
Is it in the benefit of acompany particularly an
SME to establish an IP
Department?
Is there an IP Departmentin your company?
70%
30%
Yes No
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Consideration of the Results (contd.)
IPO-Pakistan
What is the number ofemployees in the IP
Department of your
company?
What is the role of the IPDepartment 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 disputesand search of IP rights of
other companies.
57%
13%0%
0%
0%
30%
< 5 < 10 < 15 < 20 Others No Reply
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Consideration of the Results (contd.)
83%
17%
Yes No
IPO-Pakistan
Do you have some
knowledge about the
International Treaties to
which Japan is a
signatory state?
These International
Treaties are helpful
for your company?
66%
17%
17%
Yes No No Reply
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Consideration of the Results (contd.)
87%
13%
Yes No
IPO-Pakistan
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?
61%
26%
13%
Yes No No Reply
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Consideration of the Results (contd.)
IPO-Pakistan
Which InternationalTreaties are used by
your company to
register its IP rights?
Do you know what is MadridProtocol for the International
Registration of Marks?
Paris Convention;
Patent Cooperation Treaty;
Madrid Protocol.79%
17%
4%
Yes No No Reply
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Consideration of the Results (contd.)
IPO-Pakistan
What are the benefitsthat your company
have by using the
Madrid Protocol?
Is the Government of Japanreceived your company
views before acceding to
Madrid Protocol?
Simple procedure;
Cost effective; and
Subsequent designation.
0%
87%
13%
Yes No No Reply
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Consideration of the Results (contd.)
0%
87%
13%
Yes No No Reply
IPO-Pakistan
Did your company receive
any kind of capacitybuilding and awareness
programs from the
Government of Japan?
Does your company ever
used the route of MadridProtocol for registering
its marks abroad?
39%
52%
9%
Yes No No Reply
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Consideration of the Results (contd.)
IPO-Pakistan
What are the difficulties
that are faced by yourcompany in using the
Madrid Protocol?
Is the fee structure for the
international registration of amark 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.
57%
26%
17%
Yes No No Reply
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Consideration of the Results (contd.)
IPO-Pakistan
Is the conventional way ofregistering the marks by
Paris Convention is better
than the Madrid Protocol?
Why the Paris Conventionroute is better than the
Madrid Protocol route?
Paris Convention is simpler
for small number of
applications; and
It has more proven records.
13 %
61 %
26%
Yes No No Reply
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Consideration of the Results (contd.)
17%
79%
4%
Yes No No Reply
IPO-Pakistan
Do you have some know
how about the provisionof Central Attack in the
Madrid Protocol?
What do you think
whether the provisionof Central Attack is
acceptable to your
company or not?
14%
5%
81%
Yes No No Reply
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Consideration of the Results (contd.)
IPO-Pakistan
Why the provision of CentralAttack 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.
C id i f h R l
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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 knowtheir 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;
IPO-Pakistan
C id ti f th R lt
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Consideration of the Results (contd.)
Hypothesis No. 4: (contd.)
In view of the first Attorney, the main disadvantage of MadridProtocol is the provision of Central Attack whereas thesecond Attorney is of the view that the main disadvantage ofMadrid Protocol is that the burden of the Patent Office willincrease;
Both the Attorneys are of the view that MM18 form issubmitted along with MM2 form when US is designatedbecause it is the requirement of its national legislation andMM17 form is submitted along with MM2 form, if the applicanthas any Claimof Seniorityin the countries of the EuropeanCommunity;
Both the Attorneys are of the view that the submission ofdifferent forms like MM18 form with MM2 form is against theharmonization of the system. However, at this stage eachcountrysnational law is different and individual requirementswill decrease, when laws of each country are harmonized;
Both the Attorneys are of the view that no supplementary andcomplementary fees are payable when the applicantdesignates a Contracting Party that fix its own Individual Fee.But, when the Contracting Party requires additional fee foradditional classes, the supplementary fee fixed by thatContracting Party for each additional class must also be paid;
IPO-Pakistan
C id ti f th R lt
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Consideration of the Results (contd.)
Hypothesis No. 4: (contd.)
Both the Attorneys are of the view that the applicant will paythe Individual Fee directly to the International Bureau of WIPO;
Both the Attorneys are of the view that the applicant will paythe Supplementary and Complementary Fees directly to theInternational Bureau of WIPO;
Both the Attorneys are of the view that the Individual Fee fixedby a Contracting Party may not be higher than the equivalentamount which the assumed Contracting Party will receivefrom an applicant for a ten year registration or from the holderof a registration for a ten year renewal of that registration;
In view of the first Attorney, if the local fee for domestic TradeMark filing is too expensive than the fees required for theinternational registration of a Mark then such kind ofdiscrepancy can be remedied by fixing an Individual Feewhereas in view of the second Attorney, if the official fee isless than the complementary fee then the Contracting Partyshould not fix its own Individual Fee and vice versa;
IPO-Pakistan
C id ti f th R lt
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Consideration of the Results (contd.)
Hypothesis No. 4: (contd.)
Both the Attorneys are of the view that the application will betranslated by the International Bureau of WIPO in case wherethe Office of Origin is using French language and thedesignated Contracting Party is using English or Spanishlanguage, as the case may be;
In view of the first Attorney, the International Registration isdependent on the basic application or registration for the first5 years probably due to the Article 6quinqies of the ParisConvention whereas in view of the second Attorney thisprovision comes forward from the Madrid Agreement but theAttorney does not know the reason that why this provision ofCentralAttackis carried forward in the Madrid Protocol;
Both the Attorneys are of the view that the Japanese clientsenquire about the fees, time and procedure of internationalregistration of a Mark filed through Madrid Protocol. Inaddition to this, the clients are very much concerned aboutthe description of goods and services;
Both the Attorneys have described almost similar practicesand processes to handle the international applications filedthrough Madrid Protocol;
IPO-Pakistan
C id ti f th R lt
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Consideration of the Results (contd.)
Hypothesis No. 4: (contd.)
Both the Attorneys are of the view that the description ofgoods and services in the international application is adifficult task for the Attorneys because every ContractingParty has its own interpretations of goods and services;
In view of the first Attorney, there is a reduction in therevenues of the Patent firms in Japan after acceding tothe Madrid Protocol whereas in view of the secondAttorney there is no impact of Madrid Protocol on therevenues of the Patent firms in Japan especially SHIGAInternational Patent Office;
Both the Attorneys are of the view that Madrid Protocol isa very effective system for the Industries because it
provides an easy way to protect and manage their IPrights around the globe;
Both the Attorneys are of the view that the small andmedium enterprises will benefit from the Madrid Protocolbecause the cost is low and the procedures are muchsimpler as compared to Paris Convention route;
IPO-Pakistan
C id ti f th R lt
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Consideration of the Results (contd.)
Hypothesis No. 4: (contd.)
The first Attorney is of the view that this question maybetter be asked to JPO but the second Attorney is of theview that the most important implication that an Office ofOrigin will face after accession to Madrid Protocol is thedifference between domestic applications and the MadridProtocol applications. In addition to it, the Office of Originwill have to work in English, French or Spanish language;
Both the Attorneys are of the view that a country shouldaccede to Madrid Protocol because it will facilitate itsindustry especially SMEs to expand their businesses; and
In view of the first Attorney, Japanese are still using theParis Convention route more as compared to the Madrid
Protocol route due to the provision of Central Attackwhereas the second Attorney is of the view that this isbecause of the fact that there is very less membershipfrom the Asian countries in the Madrid Protocol and theJapanese Companies have already registered their Marksvia Paris Convention route.
IPO-Pakistan
Conside ation of the Res lts
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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 followingfive 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.
IPO-Pakistan
Consideration of the Results ( d )
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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 areTrade Mark Examiners, 386 are Appeal Examiners and633 are Clerical Staff;
The International Trade Mark Application Office of JPOdeals with the international applications filed via MadridProtocol;
The staff strength of International Trade Mark ApplicationOffice of JPO is 12;
The Trade Mark Examiners for examining MadridProtocol applications are separate from the Trade MarkExaminers that examines the domestic applications ofmarks;
There are 28 Trade Mark Examiners for examining theinternational applications filed through Madrid Protocol;
IPO-Pakistan
Consideration of the Results ( d )
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Consideration of the Results (contd.)
Hypothesis No. 5: (contd.)
The number of applications that are examined by eachExaminer for Madrid Protocol in the year 2006 is 293;
Whereas, the number of domestic applications examinedby 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 35thto 38thBoards of Appeal;
There are 11 Appeal Examiners that deals with theappeals 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 Protocolapplications in the year 2007 is 14.
IPO-Pakistan
Consideration of the Results ( td )
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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 afteraccession to Madrid Protocol is language because
domestic language is different from the Officiallanguages of Madrid Protocol;
Japan Patent Office always encourages its officers toattend the English language courses run by NationalCentre 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.
IPO-Pakistan
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Consideration of the Results ( td )
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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.
IPO-Pakistan
Consideration of the Results ( td )
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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.
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Recommendations
Hypothesis No. 1:
The domestic Trade Marks legislation must beamended in line with the provisions of the MadridProtocol;
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 theexisting rules or separate rules may be prepared; and
The legislation of Singapore is simpler as compared tothe legislations of Japan and United States of Americafor giving effect to the provisions of Madrid Protocol inthe respective countries.
IPO-Pakistan
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Recommendations (contd.)
Hypothesis No. 2:
Awareness and capacity building of small and mediumenterprises is necessary for the maximum utilization ofMadrid Protocol;
Seminars should be arranged in all the Chambers of
Commerce and Industry to disseminate the informationof Madrid Protocol;
Surveys should be conducted to know the point of viewof 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 toeducate all the persons that are related to the field of IP.
IPO-Pakistan
Recommendations (contd )
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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 mayprovide 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.IPO-Pakistan
Recommendations (contd )
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Recommendations (contd.)
Hypothesis No. 4:
Acquisition of intellectual property rights is very importantfor a small and medium enterprise to grow;
The maintenance of IP Profile on the websites of thecompanies will help them to win the trust of the clients;
Patents, Trade Marks and Industrial Designs are the mostimportant IP forms for the development of an SME;
The registration of Marks through Madrid Protocol is farmore easier as compared to the Paris Convention;
Every company should establish a separate IP departmentfor the management of its IP rights;
The staff of the IP department must be well conversant withthe domestic registration procedures of different forms ofIP as well as with the international treaties for theregistration of IP rights in the world;
IPO-Pakistan
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Recommendations (contd.)
Hypothesis No. 4: (contd.)
The international treaties can play an important role in thegrowth of the local industry provided that the local industryis well aware of the importance of their IP rights;
The fee structure of Madrid Protocol may be acceptable forthe SMEs of a developed country but it is higher for theSMEs of a developing country;
The requirement of different countries for the registrationof a Mark should be harmonized in order to facilitate theuser of the system;
The description of goods and services in the internationalapplication is the most difficult task because every countryhas its own interpretation of the goods and services
although they are following the Nice Classification ofGoods and Services; and
The problem of description of goods and services is alsobecomes more significant due to difference in the languageof Madrid Protocol (English, French or Spanish) with that ofthe national language of the Country.
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Recommendations (contd.)
Hypothesis No. 5:
There should be a separate section in the Trade Marks Registrythat deals with the international applications filed through MadridProtocol;
The Trade Mark Examiners for international applications filedthrough Madrid Protocol should be separated from the TradeMark Examiners dealing with the domestic applications;
Capacity Building of the Trade Mark Examiners dealing with theinternational applications in terms of the rules and regulations ofMadrid Protocol, language, computer literacy etc. is necessarybefore acceding to Madrid Protocol;
There should be no back log in the Trade Marks Registry in orderto reduce the chances of failure of the system;
E-Filing is not a pre-requisite for acceding to Madrid Protocol butit facilitates the applicants to use the system;
The Trade Marks Registry should have an effective system ofelectronic communication with the International Bureau of WIPO;
Madrid Protocol will work more efficiently in Post- RegistrationOpposition system as compared to Pre-Registration Oppositionsystem.
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