Prosper Ndlovu and Aleck Ncube
THE move by the Government to ratify the Madrid Trademarks Protocol is expected to create new opportunities for entrepreneurs among numerous benefits to the economy.
The protocol seeks to provide a simplified and inexpensive procedure for the registration of trademarks in countries that are party to the agreement.
A trademark generally refers to a symbol, word, or words legally registered or established by use as representing a company or product.
Parliament has already approved the amendments to the Trademarks Act (Chapter 26:04) to incorporate the provisions of the Madrid Protocol into domestic legislation as contained in the General Laws Amendment Act, 2016, Vice President Emmerson Mnangagwa, who is also the Minister of Justice, Legal and Parliamentary Affairs, said recently.
The full operationalisation of the Madrid Protocol has been hampered by the absence of implementing regulations. Take note that Zimbabwe was part of the agreement not the protocol. By ratifying the protocol, it means Zimbabwe is now a full member of the Madrid System for Trademark Registration as it has ratified both the Agreement and the Protocol.
Zimbabwe joined the World Intellectual Property Organisation (WIPO)’s Protocol relating to the Madrid Agreement on December 11, 2014 but had not ratified the protocol and this meant it was not bound by the modalities of the trademark administration undertaken by the World Intellectual Property Organisation (WIPO). Ratification means this scenario has changed.
It is a fact that trademark agents in Zimbabwe were not happy with this move as they felt it takes away business from them as those who were filing trademark applications at the Zimbabwe Intellectual Property (ZIPO), had to use a local Zimbabwean trademark agent.
Now with this move, someone can just file one application and designate Zimbabwe without using any local trademark agent. Zimbabwe has always had a sound trademark registration system and this move is a further enhancement of Zimbabwe as a country open for business. The ratification appeals to investors as it makes them easily get trademark protection without any major hassles.
The Madrid Agreement and the Madrid Protocol are independent, parallel treaties, with separate, but overlapping, memberships. It follows that, as long as all countries party to the Madrid Agreement have not joined the protocol, there will be three groups of members of the Madrid Union: states party only to the Madrid Agreement, states and organisations party only to the Protocol, and states party to both the Madrid Agreement and the Protocol. The question then arises of which treaty will be binding between states party to both the agreement and the protocol.
Put simply the Madrid System is a centralised trademark filing and management mechanism (Administered in Geneva by WIPO. It provides a one-stop shop for trademark holders to obtain and maintain trademark protection in export markets. It offers an alternative to the national or regional route. The domestic legislation of the designated contracting parties set the conditions for protecting a trademark and determines the rights, which result from protection.
Benefits to trademark owners
These include but not limited to simple and economical procedure, a single set of simple formalities, a single filing office, low registration fees and no need to pay foreign trade mark agents for fillings (Zim trademark agents were getting money through this procedure before). There is also no need to pay translation of the paperwork into several languages, it is an effective procedure, single international application produces same legal effect in various countries and there is also a fixed deadline for the confirmation or refusal of the legal effects in each designated country.
Benefits for the office (ZIPO) and the Government
Ratification entails simplified examination. Also the designated office can focus on substantive examination as WIPO examines formalities. This has a positive effect on economic growth, it empowers small to medium enterprises (SMEs), promotes international trade by contributing to the opening of new markets and assisting in development of exports and creates a more favourable climate for foreign investment in the internal market.
Benefits for local trademark agents
The Madrid Protocol is optional and does not replace the direct filing route. Applicants would need the services of local agents at filing stage or at post registration stage. Increased designations will create more business opportunities. This means trademark agents will have more substantive work, they will undertake searches, challenge refusals, lodge oppositions, request for cancellations, dispute settlements, licence and assignments, contracts and more trademark enforcement work. Post registration activities may compensate for any reduction in local filing.
The Madrid Protocol was adopted in 1989 in order to introduce certain new features into the system of the international registration of marks, with the aim of removing the difficulties preventing certain countries from adhering to the Madrid Agreement. As compared with the Madrid Agreement, the Protocol introduces the following main innovations: — the applicant may base his application for international registration on an application filed with the office of origin; under the agreement, an international application must be based on a registration in the office of origin; — each contracting party in which the applicant seeks protection may elect for a period of 18 months (instead of one year), and an even longer period in the case of opposition, within which to declare that protection cannot be granted to the mark in its territory; — the office of each contracting party may receive higher fees than under the Madrid Agreement.
An international registration, which is cancelled, at the request of the office of origin, for example because the basic application has been refused or the basic registration has been invalidated within five years from the date of the international registration, may be transformed into national (or regional).
Applications in the respective contracting parties in which the international registration had effect, each benefiting from the date of the international registration and, where applicable, its priority date. This possibility does not exist under the Madrid Agreement.
Other advantages of the system
International registration has several advantages for the owner of the mark. After registering the mark, or filing an application for registration, with the office of origin, one has to file only one application in one language (English, French or Spanish), and pay fees to one office instead of filing separately in the trademark offices of the various contracting parties in different languages, and paying a separate fee in each office.
According to VP Mnangagwa the Department of Deeds, Companies and Intellectual Property would act as both an office of origin and receiving tasked with examining trademark applications originating from Zimbabwe before transmitting them to the International Bureau at WIPO as well as examining trademark applications designating Zimbabwe, which come through the WIPO International Bureau and making decisions to register or reject such applications.
Hence ratification will assist the Department of Deeds, Companies and Intellectual Property within the Ministry of Justice to process the trade mark applications that are filed through the Madrid system.
Another important advantage for owners of marks lies in the fact that all changes subsequent to the international registration, such as a change in name and/or address of the holder, a (total or partial) change in ownership of the holder or a limitation of the list of goods and services in respect of all or some of the designated contracting parties, may be recorded and have effect by means of a single procedure with the International Bureau and the payment of one fee.
In summary, the main advantages for trademark owners consist of the simplicity of the international registration system and the financial savings made when obtaining and maintaining the protection of their marks abroad. International registration is also to the advantage of trademark offices. For example, they do not need to examine for compliance with formal requirements, or classify the goods or services, or publish the marks. Moreover, part of the fees collected by the International Bureau is transferred to the contracting parties in which protection is sought. Furthermore, if the International Registration Service closes its biennial accounts with a profit, the proceeds are divided among the contracting parties.