Be Wary of These Challenges While Filing a Trademark Under Madrid Protocol

Brand owners planning a business expansion abroad or already have an international presence are contemplating the benefits of the Madrid Protocol of International Trademark Registration after the UAE joined the Protocol on September 28th, 2021. The Madrid Protocol offers clear benefits over the national application method including the cost-effectiveness and centralised filing process. However, trademark agents in the UAE advise you to have a look at the potential challenges involved in the process as well. Some of the key challenges of the Madrid Protocol of international trademark registration are listed below:

Dependency on Basic Application/Registration

International trademark registration under the Madrid Protocol is dependent upon the basic application or registration for five years from the date of the international registration. This dependency on the basic mark makes the trademark registration vulnerable to what is generally known as the ‘Central Attack’. It means that your international trademark registration will be cancelled if the basic application is refused or withdrawn in whole or in part within five years.

Your international registration in all the contracting parties will also be cancelled if the basic registration is cancelled, lapsed or surrendered in whole or in part, within five years of the date of the international registration. A common way to avoid such types of risk is to base an international registration on registration rather than an application, if possible. Consult with trademark agents in the UAE to assess the risks to your international application and how to avoid them.

Variations in Law

Trademark registrations under Madrid Protocol cover more than 120 member countries. The applicants are not required to appoint a local representative for each of the designated member countries. However, this advantage may turn into a demerit as you can’t obtain advice from local attorneys in each country. The trademark law of each country may vary in many aspects, which may make you vulnerable to receiving unexpected objections which would have been avoided by the direct filing route.

Some countries such as the United States (US), allow the applicant to file their trademarks under only limited specifications of goods and services. The scope of trademark classes allowed by the US is significantly narrower than would usually be used in the UK and many other territories. Also, applicants may face frequent objections in the US, based on the goods and services specifications. Dealing with such objections may incur significant costs for the applicants.

Short Deadlines to Respond to Objections

While filing for trademark registration in certain member countries (e.g. China), you may get only a short time to respond to objections raised by the local IP offices. Within the short deadline, the applicants are required to receive the objection and discuss with a trademark agent how to respond to the objection. Sometimes, the applicants may find it tough to find a local trademark agent within the short deadline. Local brand owners can tackle this challenge by associating with trademark agents in the UAE with a well-established global network.

Lack of Flexibility

The Madrid Protocol system of international trademark registration doesn’t offer much flexibility when it comes to the classification of goods and services. The Protocol doesn’t allow for the filing of divisional applications, which means the applicants can’t go ahead with registration in other classes if they receive an objection in one class. Many countries don’t allow the applicants to move goods or services between classes to address classification objections.

Inadequate Communication

World Intellectual Property Organisation (WIPO) is the only entity acting as the intermediary between the various local intellectual property offices and the applicant. It means the applicants can expect delays in receiving official communications.

Enforcement Difficulties

Certain signatories have not fully enshrined the Madrid Protocol in their trademark law, which makes the enforcement of an international registration in those territories. For example, Madrid Protocol registrations covering the African Intellectual Property Organization (OAPI) region are not enforceable in all states. It is advisable to seek the advice of trademark agents in the UAE before seeking protection in such countries or regions.

Extended Timescales

Generally, trademark registration under Madrid Protocol is faster as the national application procedures are faster in most territories. However, there are certain territories such as the EU and the UK where the national application procedure for Madrid Protocol may consume much time. Although it is required to complete the process within 18 months of application, the opposition period in certain territories may extend beyond this deadline. Consult with trademark agents in the UAE if your application faces opposition in any of these territories.

Hire the Best Trademark Agents in the UAE

Understanding the challenges of the Madrid Protocol is essential before applying for trademark registration in multiple global jurisdictions. Seeking the advice of leading trademark agents in the UAE such as Jitendra Intellectual Property (JIP) will enable you to find robust solutions for each of these trademark challenges. The JIP team is made up of a group of experienced, commercially intelligent professionals who are well-qualified to provide you with bespoke trademark services in Dubai, UAE.

With every trademark application, we are entrusted with, the JIP team conducts robust trademark searches and advises you on whether the proposed trademark would comply with relevant trademark laws. If your trademark is not fit to be registered in a specific territory, we will promptly inform you and work with you to find an alternative. JIP’s trademark experts will do everything in their power to ensure that your trademark journey is as easy and hassle-free as possible.

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