Madrid V/s National Applications: Which Is the Ideal Route to Go?
The UAE acceded to the Madrid Protocol on September 28th 2021 and the Madrid system of international trademark registration came into force in the country on December 28th, 2021. The Madrid Protocol of international trademark registration enables brand owners to gain trademark protection in multiple global territories through a single filing. Moreover, you can apply in one language with one set of the official fee for trademark registration under the Madrid Protocol.
Irrespective of the numerous benefits the Protocol offers, trademark agents in the UAE advise you to decide whether the Madrid protocol or the National trademark registration is the ideal way for your brands. Just because Madrid Protocol is convenient and cost-effective, it doesn’t mean one should give up the National Application route. Opting for National trademark registration in the UAE will be more beneficial for some brands and Madrid Protocol may be more ideal for other brands.
Assessing the two systems of trademark registration to select the most appropriate way of registration is a complicated process. Read the following blog that will offer you sound insights into the matter:
Factors that Favour the Madrid Protocol
First, let us analyse certain benefits offered by the Madrid Protocol that puts it in favour of brand owners. Trademark agents in the UAE can guide you to analyse each of these benefits further. If the following points are relevant to your brand requirements, it is time you file an application under the Madrid Protocol of international trademark registration.
1. Centralised Application Process
You can have a centralised system for international trademark registration if you use the Madrid Protocol. The trademark application process under the Madrid Protocol is being administered by the World Intellectual Property Organisation (WIPO). You only need a single application filed from your home country, which will be extended to the designated member countries of your choice.
2. No Language Barrier
You can choose English as your official language for filing your applications under the Madrid Protocol. Even if your designated countries use different languages, WIPO allows you to file in one language. It means no need to get your application translated into multiple languages.
3. Cost-effective Application
The cost of filing a trademark application under the Madrid Protocol is low compared to the National Application. It saves you the cost of filing multiple applications and translating the application into multiple languages. Without such an effective system, brand owners would have been required to bear the cost of filing a bundle of applications in each of the countries they wish to expand into.
4. Access to Trademark Portfolio
You can maintain a trademark portfolio under the Madrid system, which is a benefit you can only dream of under the National system. Unlike the National Trademark Offices, the WIPO provides you with access to a Trademark Portfolio and a database facility.
Factors that Favour a National Application
WIPO offers a host of benefits for trademark owners but that doesn’t mean the National System of trademark registration doesn’t. Here is a list of benefits you can avail by carrying out a trademark registration under the National trademark offices of relevant countries:
1. Less Time for Registration
The standard time for trademark registration under the Madrid Protocol is 12 to 18 months. If no response is issued by a designated member country within the deadline, then the trademark will be accepted as registered with the WIPO. However, you can get your trademark registered with a National Trademark Office within three months.
2. Easy to Deal with Rejection & Opposition
Under the Madrid Protocol, your trademark application will be examined by the Trademark Offices of the relevant designated countries. Therefore, you must expect and be prepared to deal with rejections or opposition action from multiple corners. You can also expect a central attack under the Madrid Protocol, where a party can apply to cancel your basic application or the resultant registration. A rejection under a National Application is easy to deal with as only a single authority will be examining your application.
3. Full Support of Local Agents
Brand owners who go the way of National Applications can have the benefit of relying on the local trademark agents for the successful clearance of the application. For example, trademark agents in the UAE can offer continuous monitoring and expedition of your applications filed in the country, which is not available under the Madrid Protocol. Under the Madrid Protocol, local representatives become more relevant when a provisional refusal is issued.
4. Flexible Payment Terms
Under the Madrid Protocol, you must make the 100% payment to the WIPO while moving the application. However, the procedures of trademark registration in the UAE allow you to pay in instalments as well. The chances of a refund are higher under the National Application but the WIPO doesn’t refund any of the fees paid by the applicants.
Apply through Jitendra Intellectual Property
In conclusion, both the Madrid Protocol of International Trademark registration and the National Applications offer their own distinct benefits. However, trademark agents in the UAE advise you to carefully compare the pros and cons of each system and come up with a sensible decision. Trademark agents such as Jitendra Intellectual Property (JIP) can help you to assess the benefits and risks associated with each of the trademark registration systems, enabling you to make the right decision. We will help you efficiently plan your brand protection strategy in the best possible manner.