What is the Madrid System?

How the Madrid System Works

We at A.A. Dewan & Co. recognize that in today’s interconnected global marketplace, safeguarding your brand is essential to staying ahead of the competition. Hence our Trademark Search Worldwide services are designed to help businesses secure their intellectual property by identifying potential conflicts and ensuring their trademarks are protected in key international markets. Here’s how we do it:

We utilize a range of international trademark databases to perform a comprehensive Trademark Search Worldwide:

• Office of Origin (OO): Applications are filed through the Trade Marks Registry (TMR), Karachi, which acts as the Office of Origin. After formal examination, the application is forwarded to the International Bureau (IB) of WIPO.
• International Review: WIPO performs a formal examination and publishes the mark in the WIPO International Gazette.
• Designation of Countries: The trademark is then sent to the designated member countries for substantive examination according to their national laws. Each country may accept or refuse the mark within 12–18 months, after which it is either registered or rejected.
• Dependence on Basic Mark: The international registration depends on the basic national registration for five years. If the national registration is canceled within this period, the international protection also ceases.
• Validity & Renewal: The international registration depends on the basic national registration for five years. If the national registration is canceled within this period, the international protection also ceases.

Additional Advantages of Madrid System

• Centralized Management: (OO): Any changes, such as a change in ownership, address, or limitation of goods and services, can be recorded through a single procedure with WIPO.
• Global Reach: Applicants can designate multiple member countries, protecting their brand in key international markets efficiently.
• Simplified Process: By acting as both the Office of Origin (OO) and the designated Contracting Party (CP), the TMR, Karachi, ensures seamless processing for applicants in Pakistan.

Requirements for Filing an International Trademark through the Office of Origin (OO)

We assist clients in filing international trademark applications under the Madrid Protocol from Pakistan. To successfully submit an application through the Office of Origin (OO), the applicant must meet at least one of the following requirements:

• The applicant is a national of Pakistan.
• The applicant is domiciled in Pakistan.
• The applicant has a real and effective business or commercial establishment in Pakistan.

In addition to fulfilling one of the above criteria, the applicant must also hold a national trademark application or registration number with the Trade Marks Registry, Karachi. This national trademark serves as the basic mark for the international application under the Madrid Protocol.

Furthermore, the international application must contain the same trademark and the identical list of goods and services as mentioned in the national filing. Applicants may also designate multiple Madrid Protocol member countries where they intend to seek trademark protection.

Our experienced intellectual property team guides you through each stage of the process—from filing with the Office of Origin to securing international registration through WIPO. We ensure your application is accurate, compliant, and strategically aligned with your global business objectives, making the Madrid Protocol process efficient and stress-free.

Pakistan as Office of Designated Contracting Party (CP) under the Madrid Protocol

Under the Madrid Protocol, Pakistan plays a vital role as an Office of Designated Contracting Party (CP). Accordingly, when an international trademark application designates Pakistan for protection, the Trade Marks Registry (TMR), Karachi becomes responsible for examining and processing the application in accordance with Pakistani trademark laws.

• Notification of International Registration by WIPO: First and foremost, the International Bureau (IB) of the World Intellectual Property Organization (WIPO) formally notifies the Trade Marks Registry, Karachi, of international trademark registrations in which Pakistan has been designated. Upon receiving this notification, the TMR records the particulars of the international registration for further examination.
• Examination under Pakistan Trademark Law: Thereafter, the Trade Marks Registry examines the international trademark application strictly in accordance with the Trade Marks Ordinance, 2001 and the relevant Trade Marks Rules. At this stage, the mark is assessed for compliance with local legal requirements, including distinctiveness, prior rights, and registrability under Pakistani law.
• Objections and Provisional Refusal: If, during examination, any objections are raised, or if a third party files an opposition after publication of the trademark in the Trademarks Journal, the Trade Marks Registry issues a Provisional Refusal. This refusal may be based on examination grounds or opposition proceedings.
• Communication with WIPO: Subsequently, the Trade Marks Registry communicates the provisional refusal to the International Bureau of WIPO, ensuring transparency and compliance with the Madrid System procedures.
• Resolution of Objections and Opposition: Following this, the applicant is given an opportunity to respond, submit arguments, or defend the trademark in Pakistan through proper legal representation. After completion of all procedures under the Trade Marks Ordinance and Rules, the Trade Marks Registry carefully evaluates the case.
• Final Decision by Trade Marks Registry: Depending on the outcome, the Registry may:
  • Withdraw the provisional refusal either fully or partially; or
  • Confirm the refusal in whole or in part based on legal findings.

Grant of Trademark Protection in Pakistan

Finally, if the trademark successfully meets all legal requirements, the Trade Marks Registry grants protection of the international trademark in Pakistan. The Registry then sends an official notification to the International Bureau of WIPO confirming the status of protection.

As a result, the trademark enjoys the same legal rights and enforcement protection in Pakistan as a nationally registered trademark.

How We Assist You?

At A.A. Dewan & Co., we provide complete legal support for Madrid Protocol trademark registrations in Pakistan. From handling objections and oppositions to liaising with WIPO and the Trade Marks Registry, our experienced IP lawyers ensure your trademark rights are effectively protected in Pakistan.

Contact Us Today!

Begin your journey toward global brand protection with our expert team. Contact A.A. Dewan & Co. today to secure your trademark under the Madrid Protocol and protect your brand worldwide.