Madrid Protocol for Trademarks: A Guide to Member Countries Vs Member Regions

The UAE brand owners are eagerly waiting to submit their applications to register their trademarks under the Madrid Protocol. As per newspaper reports, Investopia is the UAE’s first application for International trademark registration as per the Madrid Protocol. Brand owners are currently watching the progress of the Investopia trademark as the Madrid Protocol allows brand owners to register a trademark in all of the member countries and regions in a single filing, a single language and a single set of fees.

Here we need to carefully look at the two terms: ’member countries and ’member regions’. Madrid Protocol administered by the World Intellectual Property Organisation (WIPO) is composed of both regions and countries that are party to the Protocol. Brand owners who wish to register their trademarks under Madrid Protocol must be able to distinguish between the two before moving ahead with their trademark applications. Trademark agents in Dubai can help you in this regard. However, it’s good to have some basic understanding of this, which you can gain by reading the following article:

Members of the Madrid Union 

The countries and regions party to the Madrid Union (contracting parties) constitute the Madrid Protocol. While filing the application with the office of origin, you need to select from contracting parties in which you wish to protect your trademark. Later, you can also expand the geographical scope of your trademark registration in these contracting parties. Most of the contracting parties are individual countries but some are termed Member Regions. Let’s analyse what’s the difference.

Member Countries of the Madrid Union 

As per WIPO data dated 6th April 2022, there are 128 countries in the Madrid Union including the countries of the Member Regions. The UAE joined the Madrid Protocol on 21st September 2021.  UAE brand owners wishing to register their trademarks in any of these countries must first apply for a basic mark with the UAE Trademark Office. They can then apply for protection in the member countries in which they seek protection.

An applicant must designate at least one contracting party of the Protocol other than the home country (UAE) while applying for International trademark registration. However, you are allowed to choose as many contracting parties depending on the extent of protection you are seeking. You can choose additional jurisdictions to apply for registration even after the trademark is granted as the WIPO accepts subsequent designations later. Furthermore, if a new member joins the Madrid Protocol you can extend your protection in that jurisdiction using a subsequent designation. Consult with trademark agents in Dubai for more information.

Member Regions of Madrid Protocol 

In addition to the 100 plus individual countries, the Madrid Union is composed of regions that are groups of individual countries. There are three such regions in which applicants can designate their international trademark registration under the Madrid Protocol.

You need to study their procedures and rules before applying for trademark registration. Each region may have its unique laws and procedures to register trademarks. Some of the regions allow separate designations in their member countries while some others don’t. Trademark agents in Dubai can help you register your trademarks in those regions without any hassle. The following are the three regions of the Madrid Protocol:

1. Benelux Region 

The Benelux region is composed of three countries: Belgium, Netherlands and Luxembourg. You can designate Benelux for your International trademark registration and enjoy protection in three countries in one go. This was jointly agreed upon by the three countries in the Benelux Convention on Intellectual Property (BCIP). However, you are not allowed to register a trademark separately in any of these countries.

For example, if you wish to register a trademark in the Netherlands only, it is not possible through the Madrid Protocol for International trademark registration. The same case applies to Belgium or Luxembourg. It means trademark registration in the Benelux region under Madrid Protocol is suited only for businesses that are largely active in the Benelux countries.

2. The European Union

The European Union (EU) is a member of the Madrid Protocol.  You can designate the EU in your application for International trademark registration under Madrid Protocol if you seek protection in all of the European Union countries. The EU countries have their National Trademark system, which provides you with the choice to have the Madrid Protocol registration covering all of the EU, or only a few countries you are particularly interested in. However, Malta is not a member of the Madrid Protocol. However, since it is an EU member, a Madrid registration can cover Malta through the European Community Trademark system.

3. African Intellectual Property Organisation or OAPI

OAPI (Organisation Africaine de la Propriete Intellectuelle) administers the IP rights in most the African French-speaking countries. You can’t designate OAPI countries separately. It’s also not possible to file stand-alone national applications in the OAPI member countries as they have agreed to grant trademark protection only through the OAPI. Since the OAPI members are not individual members of the Madrid Protocol, coverage can’t be granted through separate national registrations.

Consult with the Best Trademark Agents in Dubai, UAE 

Knowledge about the Madrid Union member regions and countries is essential before applying for international trademark registration under Madrid Protocol. Since brand owners may not be aware of the requirements of each member, it’s advisable to consult with the best trademark agents in Dubai such as Jitendra Intellectual Property (JIP). JIP has highly qualified agents who are well-versed in the national trademark laws as well as the Madrid Protocol registration requirements. Consult with us today to protect your trademark internationally without any hassle.

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