Pakistan joined the Madrid Protocol with effect from 24 May 2021, which makes it a relatively recent addition and one that still surprises people planning a regional programme. India has been in since 2013. Pakistan’s other neighbours in the region — Bangladesh, Nepal and Sri Lanka — are not members at all, so a South Asian filing programme is a mixed one whichever way you cut it.
Pakistan attached several declarations to its accession, and three of them change how you work.
Quick reference
| In force for Pakistan | 24 May 2021 |
| Refusal period | 18 months, instead of the usual 12 |
| Opposition-based refusals | May be notified after the 18 months expires |
| Fees | An individual fee, on designation, subsequent designation and renewal |
| Declaration of intention to use | Required when Pakistan is designated |
| Licences recorded internationally | No effect in Pakistan — record nationally instead |
| Merger after division | Not available; Pakistani law does not provide for it |
| Office of origin for Pakistani applicants | The Trade Marks Registry |
Designating Pakistan
An international application designating Pakistan is filed through WIPO in the ordinary way, and the Pakistani office then examines the designation under its own law. The substantive grounds are the same ones that apply to a national application — the absolute and relative grounds in the Ordinance. See marks that cannot be registered.
What differs is the timetable and three specific conditions.
The 18-month refusal period
Pakistan declared under Article 5(2)(b) and (c) of the Protocol that the usual one-year limit for notifying a provisional refusal is replaced by 18 months — and that a provisional refusal resulting from an opposition may be notified after the 18-month limit has expired.
That second part is the one to plan around. Silence at 18 months does not mean the designation is safe. An opposition filed late in the period can produce a refusal notified afterwards, so a Pakistani designation is not confidently clear until the national opposition window has closed and nothing has come in.
For anyone diarising international registrations by the standard 12- or 18-month refusal dates, Pakistan needs its own entry.
The individual fee
Pakistan declared under Article 8(7)(a) that it wants an individual fee when it is designated — in an international application, in a subsequent designation, and on renewal of an international registration in which it has been designated — instead of a share in the supplementary and complementary fees.
The amounts are published by WIPO. The practical point is that designating Pakistan is priced separately from designating a country that takes the standard fees, so the Madrid-versus-national comparison has to be run on the actual numbers for your class count rather than on an assumption that Madrid is always cheaper.
The declaration of intention to use
Pakistan notified under Rule 7(2) that it requires a declaration of intention to use the mark when it is designated. The official forms carry this: by designating Pakistan, the applicant or holder declares an intention that the mark will be used — by them or with their consent — in Pakistan for the goods and services covered.
This is not a formality to be ticked past. Pakistani law backs it up at both ends. The national application form itself requires a statement of use, and a registration is open to revocation if the mark has not been put to genuine use in Pakistan within five years of the completion of registration, or if use has been suspended for an uninterrupted five years. See rectification and cancellation.
A designation made purely defensively, with no intention of using the mark in Pakistan, sits uneasily with the declaration and is vulnerable later.
Licences: the one that catches people out
Pakistan notified under Rule 20bis(6)(b) that the recording of licences in the International Register has no effect in Pakistan.
So a licence recorded centrally through WIPO does nothing here. To have effect, a licence relating to an international registration must be recorded in the national Register at the Pakistani office, and the formalities have to be completed directly with that office under Pakistani law.
This matters because of what national recordal does. Until an application has been made to record a registrable transaction, the transaction is ineffective against a person who acquires a conflicting interest in ignorance of it, and a person claiming to be a licensee does not get the statutory protections that otherwise attach. A group that records its licences centrally and assumes global coverage has an unrecorded licence in Pakistan. See trademark licensing in Pakistan.
No merger after division
Pakistan also notified under Rule 27ter(2)(b) that its office will not present requests to the International Bureau for the merger of international registrations resulting from division, because Pakistani law does not provide for merger.
In practice: if a Pakistani designation is divided, the parts stay divided. That is a reason to think carefully before dividing, rather than treating division as reversible.
Using Pakistan as the office of origin
A Pakistani applicant or proprietor can use an application or registration at the Trade Marks Registry as the basis for an international application, forwarded through the Registry as office of origin to WIPO.
The ordinary Madrid dependency rules apply — the international registration depends on the basic mark for five years, so an attack that succeeds against the Pakistani basic mark in that period affects the international registration, subject to transformation.
Madrid or a national filing?
The honest answer is that it depends on the shape of the programme.
Madrid tends to suit a holder already running an international registration across several countries, who wants Pakistan added to an existing structure with centralised renewal of the international registration.
A national filing tends to suit a brand whose only interest is Pakistan, a filing that needs careful handling of the specification against the one-class rule, or a situation where a local agent will be needed anyway because an objection or an opposition is likely.
And whichever route is used, two things are the same: the substantive examination under Pakistani law, and the need to record licences nationally.
Frequently asked questions
Is Pakistan a member of the Madrid Protocol? Yes, with effect from 24 May 2021.
How long does Pakistan have to refuse a Madrid designation? Eighteen months. Pakistan also declared that a refusal resulting from an opposition may be notified after that period expires, so silence at 18 months is not a clear result.
Does Pakistan charge an individual fee? Yes — on designation, on subsequent designation and on renewal of an international registration designating Pakistan.
Do I have to declare an intention to use the mark? Yes. Pakistan requires a declaration of intention to use when it is designated, and the declaration is reinforced by the national non-use revocation provisions.
Does a licence recorded at WIPO cover Pakistan? No. Pakistan declared that recording a licence in the International Register has no effect there. The licence has to be recorded with the Pakistani office under Pakistani law.
Are Pakistan’s neighbours in the Madrid System? India is. Bangladesh, Nepal and Sri Lanka are not, so a South Asian programme will combine Madrid designations with direct national filings.
Useful official resources
- WIPO Madrid System — members, forms and fees
- Intellectual Property Organization of Pakistan — national recordal and forms
- WIPO Information Notice No. 4/2021 — Pakistan’s accession and declarations
See our related notes on types of trademark application, trademark licensing in Pakistan and trademark fees.
Adding Pakistan to an international registration, or weighing it against a direct filing? Talk to us.