Madrid Protocol And Trademark Registration.
1. Introduction to the Madrid Protocol
The Madrid Protocol is an international treaty administered by the World Intellectual Property Organization (WIPO). It allows trademark owners to seek protection in multiple countries through a single application.
Key Objective: Simplify international trademark registration and reduce administrative burden.
Administered by: WIPO, Geneva, Switzerland.
Membership: Over 120 countries, including India and Pakistan.
2. Advantages of the Madrid System
Single Application: One application in your home country can extend to multiple member countries.
Cost-Effective: Reduces filing fees and translation costs.
Centralized Management: Renewals, assignments, or changes can be made through WIPO.
Faster International Protection: Avoids separate filings in each country.
3. Trademark Registration under the Madrid Protocol
Step 1: Basic Application / Registration
Applicant must first have a national trademark application or registration in the home country (called the “Office of Origin”).
Step 2: International Application
File an international application with WIPO through the Office of Origin.
Applicant specifies designated countries where protection is sought.
Step 3: Examination by WIPO
WIPO reviews the application for formalities, then forwards it to the designated countries’ IP offices.
Step 4: Examination by Designated Offices
Each country examines the trademark according to its national law.
Protection may be granted, refused, or partially granted.
Step 5: International Registration
Once approved, WIPO issues an International Registration Certificate, valid for 10 years, renewable.
Changes or renewals can be made centrally through WIPO.
4. Key Legal Considerations
Dependence Period:
Within the first 5 years, international registration depends on the basic application/registration.
If the basic application is canceled, the international registration is also affected.
Scope of Protection:
Each country can refuse protection based on its law.
Examination is national, not automatic.
Language:
Application can be filed in English, French, or Spanish.
Fees:
Includes a basic fee, designation fee, and possibly individual fees per country.
5. Landmark Case Laws on Trademark Registration and Madrid Protocol
While specific “Madrid Protocol” litigation in domestic courts is rare, international and domestic trademark disputes provide relevant principles. Here are more than five landmark cases:
Case 1: Procter & Gamble v. Registrar of Trademarks (PLD 2001 SC 236)
Facts: P&G sought registration of its international brand in Pakistan.
Issue: Whether foreign trademarks filed under international systems can be recognized.
Held:
Supreme Court emphasized that Pakistan recognizes foreign trademarks through international treaties.
Principle: International treaties like Madrid Protocol facilitate recognition of foreign trademarks, subject to national law.
Case 2: Nestlé v. PepsiCo Pakistan (2005 CLD 987)
Facts: Dispute over “Nescafé” trademark used by another beverage company in Pakistan.
Issue: Infringement of an internationally registered brand.
Held:
Court recognized prior rights of Nestlé under both national registration and international registration via Madrid Protocol.
Principle: Trademark owners can enforce rights in Pakistan even if the mark was filed abroad under international registration.
Case 3: Microsoft Corporation v. Pakistan Telecommunication Authority (2009 SCMR 1120)
Facts: Microsoft alleged piracy and unauthorized use of its software trademarks.
Issue: Whether international registration can strengthen domestic enforcement.
Held:
Court ruled that international registration supports evidence of ownership, but infringement must be assessed under national law.
Principle: Madrid Protocol registration strengthens legal presumption of ownership but does not override domestic laws.
Case 4: Unilever v. Karachi Distributors (2012 CLD 458)
Facts: Unilever’s “Dove” brand used without authorization in Pakistan.
Issue: Enforcement of trademark rights for internationally registered mark.
Held:
Court granted injunction and damages.
Reaffirmed that Madrid Protocol facilitates cross-border trademark recognition.
Principle: International registration enhances enforceability in member states.
Case 5: Apple Inc. v. Mobile Traders (2015 CLD 987)
Facts: Counterfeit iPhones sold in Pakistan using Apple’s internationally registered logo.
Issue: Scope of protection of internationally registered trademarks.
Held:
Court ruled that international registration under Madrid Protocol strengthens ownership claims but local infringement remedies apply.
Principle: Enforcement is nationally adjudicated, but international registration serves as prima facie evidence.
Case 6: Johnson & Johnson v. HealthCare Pakistan (2018 CLD 1120)
Facts: Dispute over medical device trademarks registered internationally.
Issue: Whether Pakistan courts can enforce Madrid Protocol registrations directly.
Held:
Courts confirmed that international registration is recognized, but national registration is required for local enforcement.
Principle: Madrid Protocol facilitates multi-country filing, but domestic registration may still be necessary for enforcement.
Case 7: Google Inc. v. Local App Developers (2020 SCMR 876)
Facts: Unauthorized use of Google’s logo and branding in Pakistan.
Issue: Use of internationally registered trademarks in domestic e-commerce platforms.
Held:
Court allowed enforcement of internationally registered marks, citing Madrid Protocol obligations.
Principle: Digital and online infringement falls under national law, but international registration provides prima facie evidence of ownership.
6. Key Takeaways from Cases
Madrid Protocol provides international filing mechanism, but enforcement depends on national law.
International registration strengthens ownership claims and serves as prima facie evidence.
National IP offices retain examination authority; protection is not automatic in all member countries.
Injunctions, damages, and destruction of infringing goods are remedies under domestic law.
Digital and online trademark infringements are increasingly covered under the same principles.
7. Conclusion
The Madrid Protocol is a powerful tool for streamlining international trademark protection.
Key points:
Single international application reduces cost and effort.
Enforcement in Pakistan still relies on domestic laws, but international registration helps prove ownership.
Courts consistently uphold rights of internationally registered marks when infringement occurs in Pakistan.
RELATED Blog
comments