WIPO Six Months Study-cum-Research Fellowship (April – September, 2008) ANALYSIS ON THE IMPACT OF MADRID PROTOCOL FOR THE ECONOMIES OF DEVELOPING COUNTRIES Researcher: Chaudhry Asfand Ali Assistant Director IPO-Pakistan Supervisor: Prof. Yoshitoshi Tanaka Tokyo Institute of Technology Tokyo, Japan Coordinators: Japan Patent Office & Asia-Pacific Industrial Property Centre, Japan Institute of Invention and Innovation Tokyo, September 2008 1 WIPO Six Months Study-cum-Research Fellowship (April – September, 2008) ABSTRACT The study is based on the Impact of Madrid Protocol for the Economies of Developing Countries. In this aspect, different parameters are studied which can play an important role for Developing Nations before acceding to Madrid Protocol. These parameters includes the 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 Mark through Madrid Protocol, Strategy of the Japanese Companies with emphasis on Small and Medium Enterprises to utilize the Madrid Protocol and the Operating System of Japan Patent Office (JPO) for handling the International Applications filed via Madrid Protocol both as an “Office of Origin” and as a “Designated Contracting Party”. Tokyo, September 2008 2 WIPO Six Months Study-cum-Research Fellowship (April – September, 2008) TABLE OF CONTENTS S. No. NAME OF THE CHAPTERS Page No. INTRODUCTION 06-07 1.1 Background of the Research Theme; 06 1.2 Objectives of the Research Theme; and 06-07 1.3 Methodology of the Research Theme. 07 OVERVIEW OF THE MADRID PROTOCOL 08-34 2.1 What is Madrid Protocol; 08-10 2.2 Difference in procedure between Paris Convention 10-12 and Madrid Protocol for International Registration of Marks; 2.3 Essentials of Madrid Protocol; 12 2.3.1 Eligible Applicant; 13 2.3.2 Requirements of Marks for International 13 Registration; 2.3.3 Forms for Procedures; 13 2.3.4 Acceptable Language; 14 2.3.5 Points to be noted in using the Protocol; 14 2.3.5.1 Designating United States; 14 2.3.5.2 Designating European Community; 14-15 2.3.5.3 Designating Ireland, Singapore or the United 15 Kingdom; 2.3.5.4 Central Attack; and 15-16 2.3.5.5 Safeguard Clause. 16-17 2.3.6 Fees for International Registration; 17-19 2.3.7 Responsibilities of the Office of Origin; 19-21 2.3.8 Responsibilities of the International Bureau; 21-22 2.3.9 Responsibilities of the Designated Contracting 22-24 Parties; 2.3.10 Effects of International Registration; 24-25 2.3.11 Post Registration Procedures. 25 2.3.11.1 Renewal of Registration; 25-26 2.3.11.2 Subsequent Designation; 26-28 Tokyo, September 2008 3 WIPO Six Months Study-cum-Research Fellowship (April – September, 2008) 2.3.11.3 Assignment; 28-29 2.3.11.4 Limitation, Renunciation or Cancellation; 29-30 2.3.11.5 Amendment; 30 2.3.11.6 Licenses; and 30 2.3.11.7 Change of Name or Address of the Right Holder or 30-31 its Representative. 2.4 Pros and Cons of the Madrid Protocol. 31-34 IMPLEMENTATION OF METHODOLOGY 35-121 3.1 Comparison of the Common Provisions of the 35-57 Madrid Protocol in the National Trade Marks Legislations of Japan, Singapore and United States of America and the Conflicts between the National Trade Marks Legislation of Pakistan and Madrid Protocol; 3.2 Study of the Public Awareness Strategy and 57-73 Support for Small and Medium Enterprises in Japan; 3.3 Comparison of the Fees of National registration of 74-77 a Mark in Pakistan with the Fees of International Registration of a Mark via Madrid Protocol; 3.4 Distribution of Questionnaire to the Japanese 77-95 Companies particularly small and medium enterprises and Interviews of Trademark Attorneys practicing Madrid Protocol in Japan; and 3.5 Distribution of questionnaire to the Japan Patent 95-121 Office and Interview of the Officials of JPO. CONSIDERATION OF THE RESULTS 122-146 4.1 Consequence of the comparison of common 122-123 provisions of the Madrid Protocol in the National Trade Marks Legislations of Japan, Singapore and United States of America and Conflicts between the National Trade Marks Legislation of Pakistan and Madrid Protocol; 4.2 Effect of the Awareness Strategy and Support for 123-125 SMEs in Japan; 4.3 Outcome of the Comparison of Fees; 125-126 4.4 Upshot of the Questionnaires to Japanese 126-141 Companies and Interviews of Trademark Tokyo, September 2008 4 WIPO Six Months Study-cum-Research Fellowship (April – September, 2008) Attorneys; and 4.5 Corollary of the Questionnaire to Japan Patent 141-146 Office and Interview of the Officials of JPO. RECOMMENDATIONS 147-150 5.1 First Hypothesis; 147 5.2 Second Hypothesis; 147-148 5.3 Third Hypothesis; 148 5.4 Fourth Hypothesis; and 148-149 5.5 Fifth Hypothesis. 149-150 ANNEXES Annex-I Chapter VIIBIS of the Trademark Law of Japan. 151-169 Annex-II Part VII of the Trademarks Act 1998 of Singapore. 170-171 Annex-III Sub Chapter-IV of Chapter-22 of Title 15 of the 172-187 United States Code. Annex-IV Questionnaire for the Japanese Companies 188-193 particularly SMEs. Annex-V Interview Questions for Trade Mark Attorneys of 194-196 Japan. Annex-VI Questionnaire for the Japan Patent Office. 197-199 Annex-VII Follow-Up Questionnaire for the Japan Patent 200-202 Office. REFERENCES 203-204 ACKNOWLEDGEMENT 205 Tokyo, September 2008 5 WIPO Six Months Study-cum-Research Fellowship (April – September, 2008) INTRODUCTION 1.1 Background of the Research Theme; Madrid Protocol is an effective international procedural mechanism for the registration of Marks around the globe but there are a number of things concerning this protocol that are of great concern for the developing nations. The objectives of my research theme are based on the following background information: The current legislation is required to be amended before acceding to the Madrid Protocol in order to prevent implications after the accession to the treaty; Most of the industries in Pakistan consist of Small and Medium Enterprises that are not well aware of the importance of registration of trademarks at national and international levels; The SME sector of developing countries is financially not so strong to afford the fees for the international registration of marks via Madrid Protocol; The economy of Japan is mainly based on Small and Medium Enterprises; and The staff requirements, capacity building of the staff, workload analysis and automation requirements are also the key factors before accession to the Madrid Protocol. 1.2 Objectives of the Research Theme; The objective of my research theme is to study the impact of Madrid Protocol for the economies of developing countries in terms of the following hypotheses based on the aforesaid information: 1.2.1 Current Trade Marks Law have to be amended in line with the Madrid Protocol; Tokyo, September 2008 6 WIPO Six Months Study-cum-Research Fellowship (April – September, 2008) 1.2.2 Capacity building of the SME sector of Pakistan to understand the importance of registration of marks through public awareness campaigns; 1.2.3 Financial support to the SME sector for the international registration of marks via Madrid Protocol; 1.2.4 Strategy by the Japanese companies especially the small and medium enterprises to draw maximum benefit from the Madrid Protocol; and 1.2.5 Study of the operating system of Japan for handling applications filed through Madrid Protocol. 1.3 Methodology of the Research Theme; The following methodology will be adopted in order to accomplish the above mentioned objectives of the research: 1.3.1 Comparison of the Common Provisions of the Madrid Protocol in the National Trade Marks Legislations of Japan, Singapore and United States of America and the Conflicts between the National Trade Marks Legislation of Pakistan and Madrid Protocol; 1.3.2 Study of the public awareness strategy and support for Small and Medium Enterprises in Japan; 1.3.3 Comparison of the fees of national registration of a mark in Pakistan with the fees of international registration of a mark via Madrid Protocol; 1.3.4 Distribution of questionnaire to the Japanese companies particularly small and medium enterprises and interviews of Trademark Attorneys practicing Madrid Protocol in Japan; 1.3.5 Distribution of questionnaire to the Japan Patent Office and Interview of the Officials of JPO; and 1.3.6 Recommendations. Tokyo, September 2008 7 WIPO Six Months Study-cum-Research Fellowship (April – September, 2008) OVERVIEW OF THE MADRID PROTOCOL 2.1 What is Madrid Protocol; The Madrid Protocol is a part of the Madrid System for the International Registration of Marks. Madrid System is composed of two separate treaties namely Madrid Agreement concerning the International Registration of Marks of April 14, 1891 and revised at Brussels on December 14, 1900, at Washington on June 2, 1911, at Hague on November 6, 1925, at London on June 2, 1934, at Nice on June 15, 1957 and at Stockholm on July 14, 1967 and as amended on September 28, 19791 and Protocol relating to the Madrid Agreement concerning the International Registration of Marks adopted at Madrid on June 27, 1989, entered into force on December 1, 1995, came into operation on April 1, 1996 and amended on October 3, 20062. Due to the lengthy names, the former usually referred as the Madrid Agreement or sometimes only Agreement and the latter usually referred as the Madrid Protocol or sometimes only Protocol. The Madrid System is administered by the World Intellectual Property Organization (WIPO), a specialized agency of the United Nations3 for developing a balanced and accessible International Intellectual Property System.