12 May 2016

 The director of legal division with Geneva-based  Madrid Registry, Brands and Designs, Ms Debbie Roenning says  trademarks are important in ensuring identity protection in the home market, the country concerned and abroad.

Ms Roenning said this while making an overview of the Madrid System at the national seminar on the Madrid System for the international registration of marks for stakeholders, which was organised by Companies and International Property Authority (CIPA) in collaboration with World Intellectual Property Organisation (WIPO) in Gaborone recently. 

She said the Madrid System was a one-stop shop for trademark holders to obtain and maintain trademark protection in export markets.

“It begins with a trade mark and a plan to make export, thereafter a choice must be made regarding the best way to protect the trademark abroad.”

She said there were three routes, which included, the national route, which involved filing a trademark application with the trademark office of each country in which the protection is needed, the regional route which involved, applying in countries which are members of a regional trademark registration system with effect in all member states and The international route, which files through the Madrid Protocol.

She said the Madrid System, was a centralised filing and management procedure, adding that  it was convenient and cost effective.

“When filing one application, in one language the client pays one set of fees for protection in multiple markets, also one international application is equivalent to a bundle of national applications, effectively saving time and money. By so doing one avoids paying for translations into multiple languages or working through the administrative procedures of multiple IP Offices,” she said.

Ms Roenning said the Madrid System was able to offer broad coverage to protect the client’s trademark/s simultaneously in the 113 countries covered by the 97 members of the System, of which recent accessions, included Cambodia, which is  Algeria and The Gambia.

She said being a member of the Madrid Protocol can have an impact on the Local businesses/industries in the countries concerned, the office and the government and the local attorneys.

‘Ms Roenning said the Madrid System may empower local industry, in particular the SMMEs, provide easier access to export markets and promote international trade, further development of export and provide more favorable climate for foreign investment.

She said the Madrid System was an option for trademark protection, of which the role of local attorneys and trademark agents would be to ensure that local business interests had proper protection in the country concerned, advise local businesses on possibilities of protecting their trademarks outside the country and assist clients with enforcing rights in the country concerned

When delivering on the current situation in Botswana regarding the Madrid System, the trademark examiner with CIPA, Ms Regomoditswe Badirwang said, since the establishment of CIPA, they had only recently started processing Madrid applications due to lack of capacity in the past.

According to the Madrid system if  a country is designated and does not respond within the stipulated period, protection is granted automatically. Botswana has been designated many times and were automatically granted protection. 

She said the automatic process will no longer continue since the officers have been trained to process the Madrid applications, adding that soon the marks will start to appear in the monthly trademark journal for possible opposition.

‘‘Currently we have 8596 applications application of which 5437 of them have been automatically registered. We encourage entrepreneurs to use this system to protect their marks internationally to save time and money in trials, ’’ she said. ENDS