Madrid Protocol: How to Extend Your Existing Registration to More Countries?

Protecting trademarks worldwide has become easy for the local brand owners since the UAE joined the Madrid Protocol on September 28^th 2021. Apart from enabling international trademark registration through a single application, the Madrid Protocol allows the trademark owners to extend the scope of their existing registration to additional countries. The process of expanding the geographic scope of international trademark registration is called Subsequent Designation, for which trademark agents in the UAE can assist the trademark owners.

Before applying for a Subsequent Designation under the Madrid Protocol, you must understand the key requirements and procedures. You should also understand when you need to apply for a Subsequent Designation under the Madrid Protocol. Such things and other important aspects of Subsequent Designation will be addressed in the following article:

Subsequent Designation under Madrid Protocol: What is it?

The Madrid Protocol of international trademark registration allows the brand owners to gain trademark protection in more than 120 countries through a single filing, in a single language and by paying a single set of fees. You can apply for trademark registration in the desired countries or regions that are Designated Contracting Parties to the Protocol. You can select the Designated Countries by checking the list issued by the World Intellectual Property (WIPO), which administers the Madrid Protocol.

If the WIPO grants trademark registration in the countries designated, it means your trademark is safe in those selected jurisdictions. Sometimes the business owners may need to seek protection in more countries. In such a case, they don’t need to make a fresh application for trademark registration. The trademark owners only need to apply for a subsequent designation to add further countries to their existing international registration. The process can be made easier with the assistance and guidance of trademark agents in the UAE.

When should you Apply for Subsequent Designation?

If you already have a trademark registration under the Madrid Protocol, the need for filing a Subsequent Designation generally arises in two situations. The following are the two common reasons for applying for Subsequent Designation under Madrid Protocol:

1. New countries join the Madrid Protocol and you have business interests in those countries
2. You expand your business to new countries and you need to extend the scope of your protection to those jurisdictions

Subsequent Designation: Key things to Remember

Before applying for adding more countries to your international registration, it is advisable to consult with trademark agents in the UAE. They can advise you on the prerequisites for applying for Subsequent Designation under the Madrid Protocol. Some of the key requirements are summarised below:

• You need to have an international registration number assigned to your application by the WIPO
• Remember that countries such as India and the Philippines have specific requirements for Subsequent Designations
• Understand that all Designated Countries have the same renewal date for the international registration, which is the date of the first instance of filing
• The date of renewal will not change for the countries added subsequently
• WIPO may accept certain words in your list of goods and services but it does not guarantee acceptance from other countries

When is Subsequent Designation not Possible?

The WIPO will check the date of your international trademark registration to decide whether you can apply for Subsequent Designation in certain countries. In such cases, trademark agents in the UAE can advise you on better alternatives. Subsequent Designation will not be possible in the following countries if the international registration was recorded on the dates given below:

Source: WIPO

How to File a Subsequent Designation under Madrid Protocol?

First, you need to determine if you are allowed to add certain countries depending on the date of your international trademark registration with the WIPO. Trademark agents in the UAE can help you with this assessment. If yes, you can request a Subsequent Designation directly online or using Form MM4.

You can submit the MM4 form directly to the WIPO or your home IP Office (UAE Trademark Office for UAE trademark owners). WIPO will examine the request for formalities only. If the request complies with all the requirements, WIPO will initiate the following actions:

• Record the Subsequent Designation in the International Register
• Publish it in the WIPO Gazette of International Marks
• Notify the applicants and the Designated Contracting Parties

What if a Subsequent Designation doesn’t Meet the Requirements?

You will receive an ‘Irregularity Notice’ from the WIPO in case the Subsequent Designation fail to meet the mandatory requirements. The notice will inform you about the specific problem or irregularity and advice on how to remedy it within the deadline (usually three months). It will also communicate the consequences of not solving the problem within the deadline.

Apply for Subsequent Designations via Jitendra Intellectual Property

Trademark agents in the UAE can help the trademark owners to add more countries to their international trademark registration. The process of Subsequent Designation under the Madrid Protocol can be complex as specific requirements are imposed by certain countries. Furthermore, the date of trademark registration in those countries will also affect your eligibility for extending the scope of your trademark protection.

This is why you are advised to use Jitendra Intellectual Property’s (JIP) trademark services in the UAE. JIP can help you to navigate all the challenges of Madrid Protocol through a dedicated team of highly qualified trademark agents. Consult with us today to register your trademark under the Madrid Protocol without any hassle.