madrid agreement

8/13/2019 madrid agreement

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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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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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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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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;

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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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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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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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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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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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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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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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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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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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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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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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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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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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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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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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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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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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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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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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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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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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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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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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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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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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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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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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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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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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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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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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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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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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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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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.

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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.

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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.

IPO-Pakistan

Recommendations


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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

Recommendations (contd )


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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.

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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



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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;

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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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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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