A Guide for UAE Brand Owners to Deal With Central Attack Under Madrid Protocol
As we all know by now, the Madrid Protocol offers a smooth and centralised system for protecting your trademark in international jurisdictions. However, UAE brand owners need to analyse all aspects of the Madrid Protocol, especially some risks, before applying for international trademark registration. The central attack is one of the major risks your trademark may face while opting for the Madrid Protocol.
Trademark agents in the UAE can advise you on the impacts of the Central Attack on your trademark registration. In this article, we will discuss everything you must know about Central attacks associated with the Madrid Protocol. Read ahead to know further:
What is a Central Attack under Madrid Protocol?
As you know, your international registration is built upon your home country’s registration. It means, you need to first file for trademark registration in the home country, which will be considered the basic mark. This home country registration will then be extended to other designated countries. Since your entire registration is dependent upon the basic mark, any risk faced by that mark will affect your international registration as well.
If your basic trademark is limited, denied, expired or cancelled, such actions will affect your international trademark and all its designations, which will also be limited or no longer be valid. This dependency on your basic trademark is called the Central Attack under the Madrid Protocol of international trademark registration. A third party can initiate an action against the international trademark in some or all of its designations by taking action against the basic trademark filed in the IP office of your home country. If such an action becomes successful, it would also take down not only your basic mark but also the international trademark and all its designations.
When Can a Party Initiate Central Attack Against Your Mark?
As per the regulations of World Intellectual Property (WIPO), a central attack must be commenced within five years from the date of the International Trademark Registration. The party who initiates the Central Attack will attempt to cancel the basic application, the registration resulting therefrom, or the basic registration. Consult with trademark agents in the UAE to deal with the Central Attack.
What’s the Procedure for Central Attack Under the Madrid Protocol?
The procedures and rules for the cancellation under the Central Attack will depend on the country in which that target application or registration is filed. If the cancellation application becomes successful, the decision will no longer be subject to review or appeal and the related International Registration (including all of the registrations of that International Registration in all of the Contracting Parties) will similarly be cancelled. Trademark agents in the UAE can advise you on dealing with Central Attack under the Madrid Protocol.
Transformation Rules to Deal with Madrid Protocol
UAE brand owners can reduce the risk of losing their basic marks by applying the transformation procedures. Under this process, if your international registration is cancelled, you can convert or transform this registration into multiple national and/or regional applications, to allow each to proceed in the originally designated countries or regions. Avail of trademark services in the UAE o effectively carry out a transformation procedure.
Transformation Considerations for Brand Owners
There are certain conditions and requirements you must consider while opting for the transformation procedure under the Madrid Protocol. Seeking the advice of trademark agents in the UAE will come in handy for you while applying for transformation procedures. You need to consider the following requirements while opting for transformation procedures:
- Transformation needs to be carried out within three months of the cancellation
- The goods or services specification must be the same as the original application
- The transformed applications will retain the original priority date of the international application
- The process is subject to the vagaries of each local territory. Transformation is not a centralised process; you need to do this in each designation separately
- If a country is only a party to the Agreement and not the Protocol, transformation isn’t possible (eg Algeria, Kazakhstan, Sudan and Tajikistan). For an exhaustive list of who belongs to what, check out the WIPO list of contracting parties
- Transformation should also be considered. For example, if your home registration is narrowed in scope during those first five years, and any of the culled goods or services are critical to your business
Seek Advice from the Best Trademark Agents in the UAE
You need to consider the risk of the Central Attack before developing a strategy for International Trademark Registration under the Madrid Protocol. If you are apprehensive about how to deal with the Central Attack, seek advice from the best trademark agents in the UAE such as Jitendra Intellectual Property (JIP). JIP can help you wade through the rules, regulations, and challenges of International Trademark Registration under the Madrid Protocol.