Advantages & Disadvantages of Trademark Filing Under Madrid Protocol

Madrid Protocol for International trademark registration is generating much buzz in the UAE after the country joined the system at the end of 2021. The Madrid Protocol administered by the World Intellectual Property Organisation (WIPO) offers a centralised and convenient system for international trademark registration for UAE brand owners. The UAE brand owners are excited as they can file trademarks in 122 designated member countries through a single filing, single fee and in a single language.  

However, you must make any decision after weighing on the advantages and disadvantages of a situation. The same applies to Madrid Protocol as well. Brand owners must first analyse the advantages and disadvantages of the Madrid Protocol with the help of trademark agents in Dubai. Some of the advantages and disadvantages are listed below: 

Advantages of Madrid Protocol 

Brand owners in the UAE can leverage the following benefits by registering a trademark under the Madrid Protocol: 

Only a single filing is required  

Ensuring trademark protection in multiple international jurisdictions with a single filing is the biggest attention of the Madrid Protocol for international trademark registration. In regional or national systems, you would require multiple filings for each territory. Madrid Protocol effectively eliminates this greater inconvenience. 

No need to bother about language constraints 

WIPO allows the brand owners to file the trademark application in one of the official languages, such as English, French, Spanish etc. This convenience enables you to avoid the hurdle of filing in the official language of the designated member country.  

Save the headache of hiring multiple local agents 

In most countries, you need to appoint a local agent or representative to register a national trademark. This requirement posed immense inconvenience and extra cost to the brand owners. However, the WIPO doesn’t mandate you to appoint multiple local agents in each designated member country.  

You can extend the geographical scope of protection  

Madrid Protocol allows you to expand the scope of trademark protection into new countries through the same system at a later date. This extension may be required as per your business expansion strategy. Nowadays, more member countries are joining the Madrid Protocol and WIPO allows you to extend the scope of protection into new member countries if it helps you meet your business plans. 

Cheaper to File through Madrid Protocol

You can leverage the advantage of cost-effective trademark filing through Madrid Protocol. For instance, the cost of a National trademark application in Pakistan cost is approximately USD400. However, the cost of applying the Madrid Madrid Protocol is USD 92.  

Disadvantages of Madrid Protocol  

The advantages of the Madrid Protocol may fascinate you and prompt you to apply immediately. However, you need to consider the disadvantages of the Madrid Protocol to make a final decision. Gauging both the pros and cons will help you make the right decision regarding whether to opt for the Madrid Protocol for International trademark registration. Trademark agents in Dubai can help you to make a proper assessment. Given below are the key demerits of the Madrid Protocol:  

You must have a basic registered mark  

You are not allowed to directly file your application to the WIPO. The process of international trademark registration begins with the National Application phase. To be eligible to file a trademark using the Madrid Protocol, you must have either a registered trademark or an active trademark application in the country of origin.   

Country of origin means the country where you have citizenship or the country where your business is incorporated. Additionally, this country should be a contracting party to the Madrid Protocol. The registered trademark will be considered as your basic mark during the National Phase of the application.   

You can’t broaden the list of goods & services  

While filing any kind of trademark application, you must also file the mark under relevant classes of goods and services as per the Nice Classification. Under the Madrid System, you are not allowed to broaden the Classes you selected for your basic mark. This is because your basic mark will be identical to the trademark you are going to register in multiple International jurisdictions under the Madrid System.  

The registration process is longer  

The timeframe for trademark registration under Madrid Protocol is 12 to 18 months. If an IP office of a designated member country fails to respond to the application within this timeframe, the trademark will be automatically assumed as registered. It means you have to wait for 12 to 18 months for getting the trademark registered. In contrast, your trademark will be registered in three months under the National Trademark registration process.  

The risk of being centrally attacked  

If your basic trademark filed at the home country is cancelled, the same will happen to all the trademarks you filed in other jurisdictions using Madrid Protocol. This type of risk is called a Central Attack. Apart from cancellation, the Central Attack may also occur if your mark is invalidated, abandoned or if the basic application is denied.  

Higher chances of trademark rejection 

The WIPO system doesn’t circumvent the trademark laws in the member countries. It means opposition can be raised by third parties on a country-by-country basis. Even if the home jurisdiction accepts a trademark application, we can’t guarantee the same will happen in each country designated in the IR application. It’s advisable to consult with trademark agents in Dubai before filing the IR application.  

How can Jitendra Intellectual Property Help You? 

In conclusion, trademark agents in Dubai advise you not to be either overwhelmed by the advantages or be put off by the disadvantages of the Madrid Protocol. The best thing to do is consult with the best IP firms in Dubai, such as Jitendra Intellectual Property (JIP) before making any decision. JIP has in-depth knowledge and extensive experience in trademark registration via both the national procedure and Madrid protocol. Our trademark agents can guide you through the entire process of registration, be it the National way or the Madrid way. 

Leave a Reply

Your email address will not be published. Required fields are marked *

Fill out this field
Fill out this field
Please enter a valid email address.
You need to agree with the terms to proceed