April 09, 2021

Recent IP updates in EAPO, Pakistan and Poland

The intellectual property offices of the EAPO and Pakistan have each taken steps to engage in international cooperations respectively, whilst the intellectual property office of Poland has implemented a fast track examination process for trademarks and designs.

The Protocol to the Eurasian Patent Convention on the Protection of Industrial Designs entered into force on March 17, 2021. Initially introduced to member states of the Eurasian Patent Office (EAPO) on September 9, 2019, the Protocol was implemented with the view of establishing a system for the protection of industrial designs in the region of Eurasia.
As per the provisions contained within, the Protocol would enter into force three months after the last of the first three states deposited its instruments of ratification to WIPO. As such, Kyrgyzstan was the first to submit its instruments to WIPO on October 15, 2020, followed by Azerbaijan on December 9, 2020, and Armenia being the third to deposit on December 17, 2020. The Protocol subsequently entered into force in these 3 states from March 17, 2021, whilst it will be enforced in Russia from April 11, 2021, and Kazakhstan on April 12, 2021.
A number of internal regulations must be adopted by the EAPO before Eurasian design applications can be accepted by the Office. In light of this, the date of commencement of acceptance of applications is scheduled to be determined by the EAPO on April 14, 2021. Once enforced, the system will allow for the filing of a design application in the Russian language to the EAPO, alongside the payment of one set of fees, with the design being protected within the EAPO member states privy to the Protocol. Applicants will also be able to convert a Eurasian design application into a national one in each member state within 6 months, if the initial Eurasian design application, or appeal in relation to the rejection of an application or invalidation of a design, is rejected.

The intellectual property office of Pakistan has also engaged in an international cooperation system, having deposited its instrument of accession to the Madrid Protocol with WIPO on February 24, 2021.
The Madrid Protocol, initially adopted on June 27, 1989, facilitates the international registration of trademarks, allowing applicants to apply for protection in multiple contracting parties to the system with just one application and a single set of fees.
The Madrid Protocol will enter into force in Pakistan on May 24, 2021, making the country the 108th member, and 124th country, party to the same.

The intellectual property office of Poland introduced a fast track examination procedure for trademark and industrial design applications as of March 17, 2021. The procedure for examination of such applications will be accelerated by the IPO, provided the application filed meets the necessary criteria, which will facilitate expedited granting and registration of trademark and industrial design rights.
In order to qualify for the fast track examination procedure, a design or trademark application must adhere to the stipulation of uniformity, as well as meeting regular filing requirements. Furthermore, a fast track application should be filed through the electronic system alongside the required fee, and fast track examination must be requested at the time of filing. Electronic delivery of all correspondence related to the application is mandatory for fast track examination. It is important to note that fast track trademark applications cannot relate to guarantee or collective marks.

The simplification of the registration procedure for designs within the EAPC member-states is hoped to lead to an increase in filings for design applications, expanding the economic development of the region. The same impact is hoped to be seen in Pakistan following their accession to the Madrid Protocol, whilst the fast track procedure implemented in Poland will undoubtedly encourage further engagement in trademark and industrial design applications by expediting the granting process.

Author: Danielle Carvey