Madrid Protocol: Be Wary of These Three Attacks to your Trademark Application

Registering trademarks internationally has become easier for brand owners since the UAE has joined the Madrid Protocol for international trademark registration. UAE brand owners can now register their trademarks in more than 120 countries through a single filing, a single official language and a single set of fees. Applying through trademark agents in Dubai makes the process more flexible and hassle-free. The UAE’s accession to the Madrid Protocol made the process of international trademark registration easier for local brand owners.

However, does it also make it easier for someone to attack your trademark applications filed under the Madrid system? Although we can’t conclusively say yes to this question, the brand owners should be aware of certain risks that your international trademark registrations are vulnerable to. In this article, we will elaborate on the major types of potential attacks on your trademark application under the Madrid System.

Types of Attacks against International Registrations

A brand owner may have to tackle mainly three types of attacks against a trademark application under the Madrid Protocol. Brand owners can get the help of trademark agents in Dubai to navigate such unforeseen situations. Below are the three types of attacks against Madrid Protocol trademark applications:

1. Opposition to an Extension

Once the World Intellectual Property Organisation (WIPO) issues an international trademark registration, it will notify the contracting parties of the Madrid Protocol. Each of these member countries has a time span of up to 18 months to refuse to accept the registration in their country. If a Madrid Protocol member refuses the registration within the deadline, the international registration won’t be extended to that particular Contracting Party.

If a Contracting Party does not refuse the application within the deadline, the International Registration will be automatically extended to that Contracting Party. While considering whether to deny the registration a Contracting Party may publish the trademark owner’s intention to extend trademark registration to that country. Interested parties may file an opposition against the international registration in line with the trademark laws and procedures of that country. Brand owners must consult with trademark agents in Dubai to navigate the challenges of an opposition action.

2. Central Attack

The central attack is one of the most potent forms of risk an international registration may face. In a central attack, a party attempts to cancel the basic application, the registration resulting therefrom, or the basic registration. In order to obtain an international trademark registration, an applicant must first file an application in the country of origin. The application filed with the IP office of the home country is referred to as the basic application. The basic application may also mature into a registration.

The procedures and rules for cancellation of registration as per the central attack will be based on the rules of the country in which that target application or registration is filed. If the application for a central attack is successful, the related International Registration (including all of the registrations of that International Registration in all of the Contracting Parties) will be cancelled. As a relief for the applicants, the WIPO allows the owner of the cancelled International Registration three months to file new non-Protocol applications for that trademark in all of the member countries it had an effect.

3. Invalidation Action

Although more potent, the central attack is a relatively rare phenomenon faced by brand owners. The more common form of attack against an international registration is the invalidation action. In an invalidation action, a party may attempt to cancel an international registration in a particular Contracting Party. If the opposing party wish to extend the invalidation action to more than one Contracting Party, he should file separate invalidations in each of the member countries of the Madrid Protocol. The invalidation action will be governed by the cancellation rules and procedures of each Contracting Party. If you face an invalidation action, consult with trademark agents in Dubai.

Hire the Best Trademark Agents in Dubai, UAE

Registering a trademark as per the Madrid Protocol is a complex process that requires the assistance of experienced trademark agents in Dubai such as Jitendra Intellectual Property (JIP). Appointing a trademark agent in the UAE as your local representative is mandatory to apply for your trademark as well as handle the opposition proceedings. JIP has highly qualified agents who can handle the Madrid Protocol proceedings with finesse.