If you need to secure trademark protection in multiple jurisdictions, there is no need to apply for registration in each country of interest separately. Pakistan has joined the Madrid Protocol, an international agreement administered by the World Intellectual Property Organization (WIPO), on 24th February 2021. The protocol entered into force for Pakistan on 24th May 2021. This article discusses the implications of Pakistan’s participation in the Madrid Union for both local and foreign trademark owners.
The Madrid Protocol allows trademark owners to seek protection in several countries by filing a single international application, in a single language and one currency (Swiss Francs). Madrid System is a treaty that unites countries that are members of the Paris Convention for the Protection of Industrial Property; to accede to the Madrid Protocol, countries need to be a member-state of the Paris Convention (Pakistan became a member in 2004).
Pakistan’s Two-Fold Madrid Protocol Membership
Trade Marks Registry (TMR) in Karachi, Pakistan, has two-fold Madrid Protocol membership, which means that TMR is both an Office of Origin (OO) and Office of Designated Contracting Party (CP).
Office of Origin (OO): Pakistani Applicants Applying for Trademark Protection Abroad
If a local trademark owner wishes to register their trademark in other Madrid Protocol member states, they have to apply to TMR, which is the Office of Origin for Pakistan. Under the Madrid Protocol, TMR has certain responsibilities to the trademark owner (applicant) and the WIPO International Bureau (IB):
- TMR checks whether the international application filed by the applicant meets the requirements of the Madrid Protocol
- If the international application complies with the Madrid Protocol, TMR certifies and forwards the application to WIPO IB
- However, if WIPO IB finds any discrepancies, it informs the TMR and the applicant. The trademark owner may edit their international application, and the TMR communicates with WIPO IB about the changes made
The local trademark registration (basic registration) serves as the foundation for the international registration and remains valid for 5 years, also called the central attack period. In other words, if the basic registration lapses during the 5-year period, the trademark owner has to inform WIPO IB and TMR about the lapse.
Office of Designated Contracting Party (CP): Foreign Trademark Owners Applying for Trademark Protection in Pakistan
If a foreign trademark owner wishes to register their trademark in Pakistan, they have to file an international application with WIPO IB, designating Pakistan as the country of interest. In such cases, the TMR serves as the Office of Designated Contracting Party (CP) for international trademark applications and has the following responsibilities:
- When WIPO IB receives an international application from a foreign trademark owner, it forwards the application to the TMR, which records and examines the international application in accordance with Pakistan’s Trade Marks Ordinance and Rules
- Additionally, if there are any examination oppositions or third-party oppositions after the international application is published in the Trademarks Journal, the TMR forwards a provisional refusal to WIPO IB
- Finally, when the examination process is complete, the TMR either cancels or confirms the provisional refusal and informs WIPO IB about the decision, granting trademark protection in Pakistan to the foreign trademark owner
The above-mentioned process applies to international trademark applications filed with WIPO IB, as well as to the subsequent processes, WIPO IB notifies TMR about, such as trademark renewal and changes to the trademark registration, address, and name.
Important Terminology and Timelines
- International registration validity: 10 years from the registration date with the option to renew for an additional 10-year term
- Designated country response window: 12 or 18 months depending on the law of the relevant designated country during which the local trademark office can approve or reject an international application
- Central attack period: 5 years from international registration during which the international registration is dependent on the basic registration
- Subsequent changes: Change of name/address, ownership, and/or list of goods/services can be done once with WIPO’s International Bureau instead of multiple applications in multiple jurisdictions
Frequently Asked Questions
Do I need to have a Pakistani trademark registration to file an international trademark application under the Madrid Protocol?
Yes, you need to file a national trademark application (basic application) or registration (basic registration) with the TMR before you apply for international trademark protection under the Madrid Protocol. Your local application or registration will be the basis for your international trademark protection.
What happens if my Pakistani trademark registration is canceled after I file an international trademark application under the Madrid Protocol?
If your basic registration is canceled within the first 5 years from the date of your international trademark application, your international trademark application will also be canceled (this period is known as the central attack period). In other words, your international trademark registration is dependent on the validity of your local trademark registration.
Can a foreign company register a trademark in Pakistan under the Madrid Protocol?
Yes, since 24th May 2021, Pakistan has been able to receive international trademark applications that designate Pakistan as the country of interest. In other words, a foreign trademark owner can apply for trademark protection in Pakistan under the Madrid Protocol. However, such applications are subject to examination in accordance with Pakistan’s Trademarks Ordinance and Rules.
What currency and language should I use to file a Madrid Protocol international trademark application?
You should pay the fees in Swiss Francs and file the application in either English, French or Spanish since these are the languages accepted by WIPO.
How do I file a simple, straightforward national trademark application instead of an international one?
If you wish to file a national trademark application in Pakistan, please see our guide on How to Register a Trademark in Pakistan.
If you are planning to file a trademark application in another country to expand your trademark portfolio, our Trademark Registration service can help you both with securing the necessary local Pakistani trademark registration and with filing the international trademark application. For more information on how to file an international trademark application, please visit the Madrid System page on WIPO’s website.
