Madrid Protocol: How Does WIPO Examine Your Trademark Application?

UAE brand owners with an international business presence or planning to expand globally can opt for international trademark registrations using the Madrid Protocol. By applying for trademark registration under the Madrid Protocol, you can protect your trademark in more than 120 countries that are contracting parties to the Protocol. Administered by the World Intellectual Property Organisation (WIPO), the Madrid Protocol allows brand owners to protect a trademark globally in a single filing.

Since the UAE became a party to the Madrid Protocol only recently (from September 28th, 2021), the local brand owners might be largely unaware of the standard procedures of international trademark registration. Trademark agents in the UAE can help you to register your valuable trademarks through the Madrid Protocol. Meanwhile, you can use this article as a guide to the examination procedures set out by the WIPO for international trademark applications under the Madrid Protocol. Read ahead to know further:

Stages of an International Trademark Registration under Madrid Protocol

Your application for international trademark registration will pass through various stages before being granted the registration. Apart from the WIPO, the UAE Trademark Office and the IP offices of the designated countries play a critical role in the fate of your international trademark registration filed under the Madrid Protocol. Trademark agents in the UAE can help you navigate the critical procedures set out by the WIPO. The following are the key stages of trademark registration as per the Madrid Protocol system:

Stage 1 – Application through the UAE Trademark Office (Office of origin)

You need to either file an application at the home IP office or have an already registered trademark in the home IP office. It means,  the local brand owners must either register a trademark or have an active trademark application filed with the UAE Trademark Office. Such registration is known as the Basic Mark as per WIPO’s terminology. The applicant then needs to submit the international application through the same IP office that will certify and forward it to WIPO. Trademark agents in the UAE can help you to file the basic mark.

Stage 2 – Formal examination by WIPO

The international application forwarded by the local IP office will be examined by the WIPO. You should note that the WIPO will conduct only a formal examination of the application. If approved, WIPO will record your mark in the International Register and publish it in the WIPO Gazette of International Marks. You will then receive a certificate for international trademark registration from the WIPO.

Along with issuing the certificate, WIPO will also notify the IP offices in all the countries/regions where you wish to get the trademark registered. However, you will not be able to understand the scope of your registration at this stage. You need to wait for the decision of the different IP offices in the next stage of the trademark examination.

Stage 3 – Substantive examination by the Office of the Designated Contracting Party

Your application will then go to the IP offices of the countries or regions where you want to protect your trademark. They will conduct a substantive examination of your mark and will issue a decision within the applicable deadline (12 to 18 months) as per their legislation. WIPO will record the decision of the IP offices in the International Register and then notify the applicant.

If an IP office refuses to protect your trademark, it will not affect the decisions of other IP offices where you wish to protect the mark. If you wish to contest a refusal decision, you can do it directly before the IP Office concerned in line with the Trademark Law of that country/region. If the trademark office accepts your trademark, then it will issue a grant of protection. The international registration will be valid for 10 years and you can renew it at the end of each 10-year period directly with WIPO. The renewal with WIPO will have an effect on all the Designated Parties.

Hire the Best Trademark Agents in the UAE

UAE brand owners are advised to leverage the Madrid Protocol to protect their brands globally through a single filing, in a single language and a single set of fees. Even though the benefits are many, you should be aware of the procedures to successfully gain the grant of protection in the countries where you seek protection. Trademark agents in the UAE such as Jitendra Intellectual Property (JIP) can help you to navigate the Madrid Protocol procedures easily. We can advise you on filing your trademark application with the WIPO without any error. JIP can also guide you if a Designated Country issues a provisional refusal. Avail of our trademark services today to enjoy trademark protection worldwide.

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