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International Trademark/s Filings through Madrid Protocol

UAE – International Trademark/s Filings through Madrid Protocol

Madrid Protocol, which relates to the Madrid Agreement concerning the International Registration of Marks, (Madrid System), is regulated by the World Intellectual Property Organization (WIPO) – which is one of the agencies of the United Nations. The Protocol allows owners/holders of trademarks to file and seek protection for their mark/s in 112 members list comprising 128 countries https://www.wipo.int/export/sites/www/treaties/en/documents/pdf/madrid_marks.pdf., through a single centralized application and paying a total lump sum official fees for the designated countries as calculated by WIPO. According to WIPO there are already approximately 1.3 million trademarks registered through the Madrid System and thus it seems to have become the first choice among export-oriented brand owners for international trademark registration.

With UAE’s accession to the Madrid System and its effective implementation from December 28, 2021, it has opened doors for the local players to seek protection for their trademark/s in member countries of their choice. As aforementioned, applicant will only be required to file a single international application relying on the basic home registration/application in UAE designating all those countries which are of specific interest. Likewise, brand owners in countries which are member of Madrid Protocol would now be able to designate UAE as the country for seeking protection of their mark in addition to other member countries.

Prosecution under Madrid Protocol

  1. Once an application is filed through Madrid Protocol based on a registration/application in a home country, it is then sent by the local trademarks office to the WIPO which takes notice of it, records it in the international register and examines it for any formal requisitions.
  2. Thereafter, WIPO informs the local trademarks offices of each of the designated countries of the said filing which in turn is required to substantively examine the filed trademark/s registrability and availability under local laws of their respective countries treating it as a national phase application.
  3. The local trademarks offices of any of the designated countries may issue provisional refusal/s keeping in view their local laws which are then required to be dealt with the help of assistance from local counsel/s engaged in that particular jurisdiction where such a refusal has been raised.
  4. Once the provisional refusal/s is dealt with or where the application/s is accepted sans any such refusal/s, these would then proceed onto the stage of grant of protection subject to local publication formalities/third party opposition/s, if any.
  5. Accordingly, post examining the application and undertaking due prosecution process, the respective local trademarks office/s issue final decision/grant protection and conveys it the WIPO.

Timelines

The timeline/s for this whole process is 18 months within which the concerned trademarks offices need to issue their decision post notification by WIPO. However, on the other hand, if any local trademarks office of any designated country fails to examine the application within the given time-period of 18 months and communicate it to the WIPO, the application is deemed to have been granted protection in that particular jurisdiction. The entire registration process under Madrid Protocol for all the designated countries is likely to take anywhere between 18-24 months to complete.

Advantages

  1. Single centralized application covers 128 countries, thus extending the geographical scope of trademark’s protection which includes emerging markets, some of the Middle-Eastern countries including UAE and the European Union countries as well.
  2. It obviates the need to follow different procedures and documentation for filing in different countries. Hence, there is no need to prepare and file application in different languages and accordingly pay fees in different currencies. An application can be filed in English, French or Spanish as these are the official languages used. The applicant, of course, saves on the translation costs and currency exchange/s losses.
  3. It requires no hiring of services of a local counsel/s in each of the designated jurisdictions for initial filing purposes. This need will only arise if there is a provisional refusal/s issued in any designated jurisdiction by its local trademark/s office.
  4. There is a time-bound procedure involved within which the application needs to be examined by the designated countries local trademarks offices post notification by WIPO i.e., 18 months, failing which the application would be deemed to have been granted protection in that particular jurisdiction which fails to adhere to this timeline.
  5. There is only one renewal date, instead of multiple dates, which is required to be maintained for international registrations covering different jurisdictions.
  6. Any subsequent amendments to the trademark registration such as changes in the company name, address or ownership can be recorded by means of a single central procedure covering all the designated jurisdictions.

Drawbacks

  1. There is a risk of ‘Central Attack’ in Madrid Protocol applications. This implies that if the applicant’s basic home registration is cancelled, the trademark in all the designated countries would also be automatically cancelled. This will also happen if basic application is denied registration, withdrawn or abandoned for any reason.However, there is a “transformation” provision provided under Madrid Protocol for converting any such application in designated countries to national application though the local laws of each of the designated countries should also provide for such transformation as there are certain jurisdictions which still do not adhere to it.  
  2. As the application under Madrid Protocol is required to be based on the home registration or application, such an application should therefore mirror both the mark as well as the goods/services which have been applied for/registered under this home mark. In other words, applicant under Madrid Protocol cannot digress or widen the scope of coverage vis-à-vis the mark or list of goods and services already covered under home registration/application.
  3. The scope of the protection which is extended to a mark in each of the designated jurisdictions is primarily based in accordance with the respective local laws and conditions that may be imposed at the time granting registration to it. Thus, there is no ‘uniform protection policy’ which is applicable to all the member countries under this protocol.
  4. The applicant would have to wait for anywhere between 18 to 24 months for the application to be granted protection in all the 128 designated countries. This is mainly because the maximum timeline given for the trademarks offices of designated countries to examine such an application is 18 months from the date WIPO notifies them of it. The application would be deemed to have been granted only when any designated country’s trademarks office fails to examine the application within the given timeline. However, there may be countries such as UAE where an applicant is likely to be granted protection in 3 months’ time.

Conclusion

With UAE allowing applications to be filed under Madrid Protocol, it is a step in the right direction. It would allow the local brand owners who are into export driven businesses to cost effectively consider filing application/s in multiple jurisdictions for expanding protection for their trademark/s specially if they were to safeguard their interests in other member countries where they are commercially present. At the same time, it would allow the foreign brand owners as well to designate UAE as one of the countries where they could protect their trademark and if required, also think in terms of being commercially present in this country. Further, filing through Madrid Protocol does offer number of advantages. However, applicant/s, before adopting such a route, should conduct their own benefit analyses (including costs) as there are certain drawbacks as well for filing such application/s. To begin with, instead of covering all the member countries, applicant/s can consider designating only those countries which are of immediate interest/s or have commercial presence and then move onto other jurisdictions.            

If you have any questions about this or any other query related to Trademarks Law, please get in touch with the author Rajiv Suri directly on r.suri@alsuwaidi.ae 

Rajiv Suri is a senior associate in the intellectual property and corporate and commercial team at Alsuwaidi & Company. Rajiv advises clients on strategies involving a wide range of intellectual property matters and has been involved in managing corporate portfolios across various industries.