Madrid Protocol: 7 Key Things About International Trademark Applications

UAE brand owners may wish to get their trademark protected in several countries. However, filing a separate trademark application in each country is expensive and time-consuming. This disadvantage has been eliminated after the UAE joined the Madrid Protocol on September 28th, 2021. The Madrid Protocol facilitates international trademark registrations in multiple countries through a single application in one language. Trademark agents in the UAE advise you to go through the following blog to understand the Seven key things you must know about international trademark applications:

1. An Agreement & Protocol Constitute the Madrid System

The Madrid System for international trademark registration is governed by two treaties: The Madrid Agreement and the Madrid Protocol. The Madrid Agreement was concluded in 1891 and the Madrid Protocol relating to the Agreement concluded in 1989. The Madrid Union is made up of countries and organisations party to the Madrid System that are collectively called the Contracting Parties.

As of May 2022, there are 112 Madrid Unions that cover 128 countries. The Madrid System is administered by the World Intellectual Property Organisation (WIPO). Consult with trademark agents in the UAE for further information on the structure of the Madrid System.

2. You Need to File Through a National IP Office

Even though the Madrid Protocol offers a centralised trademark registration system for worldwide protection, you can’t file your application directly with the WIPO. To file a trademark under the Madrid System, you need to either have an already registered trademark or an active trademark application filed in the Office of Origin.  The Office of Origin refers to the National IP Office of one of the countries party to the Madrid Protocol where the applicant has a real and effective industrial or commercial establishment or a domicile in, or who is a national. A trademark registration granted by the IP office of the country of origin is referred to as the basic mark.

3. Your Registration is Dependent on the Basic Mark

Your international trademark registration will be dependent upon the basic mark for the first five years. This dependency continues to be a major concern for brand owners wishing to protect their trademarks internationally. This dependency is risky for you as any negative action on the basic mark will have the same effect on your international trademark registration. For example, if your basic mark gets cancelled the same will happen to your international registration in all the designated countries. This risk triggered by the dependency is called the Central Attack. Trademark agents in the UAE can advise you on how to deal with the Central Attack under the Madrid Protocol.

4. You Need to Deal With the Contracting Parties

The Madrid Protocol indeed allows you to protect your trademark across various countries through a single filing. However, you still need to navigate the trademark laws and procedures of each designated contracting party. Each country will have the opportunity to examine your international trademark application based on relevant local IP laws and procedures. Some regions such as Africa may pose immense challenges as many countries in that region lack competent IP legislation and corresponding implementing regulation.

5. You Can Add More Countries Later

Brand owners holding an international trademark registration are allowed to add additional contracting parties later. WIPO allows you to designate additional countries at any time through a process called subsequent designation. However, you need to ensure that the additional country you designate must be a contracting party to the Protocol at the time of requesting subsequent designation. A subsequent designation may be useful when new countries join the protocol or you develop a business interest in another country after obtaining international registration.

6. You Can Choose From Three Official Languages

Since 2004, the Madrid System has been operating under a trilingual system, consisting of English, French and Spanish. It means the international trademark application should be filed in English, French or Spanish, as prescribed by the Office of origin. The Office of Origin may allow you to file in only one or only two of those languages or file in any of them. Moreover, any communication sent to the International Bureau within WIPO should be written in English, French or Spanish, as chosen by the party sending the communication. Furthermore, the applicants or international trademark holders can choose to receive communications from the WIPO in any one of these languages.

7. You Can Renew the International Registration Easily

An international trademark registration as per the Madrid Protocol is valid for 10 years. You can renew your international trademark registration every 10 years by paying the requisite fees to the International Bureau at WIPO. More renewal information can be obtained from trademark agents in the UAE.

Hire the Best Trademark Agents in the UAE

Brand owners seeking an end-to-end solution for their Madrid Protocol application can seek help from trademark agents in the UAE such as Jitendra Intellectual Property (JIP). JIP offers bespoke trademark services in Dubai at cost-effective rates. Our services include trademark registration, trademark search, and trademark watch services. With our assistance, you can file a trademark not only in the UAE but across the GCC and more than 120 countries that are part of the Madrid Protocol. Enjoy hassle-free trademark registration using JIP’s robust trademark protection strategies.