Madrid Protocol: How to Select Goods and Services?

The UAE’s accession to the Madrid Protocol of international trademark registration has enabled the brand owners to gain protection for their trademarks in several international territories with one registration. The Madrid System is governed by the Protocol as per the Madrid Agreement Concerning the International Registration of Trademarks. It means the brand owners need to understand the laws set out in the protocol before applying for trademark registration. The knowledge of the Madrid Protocol will be critical for the brand owners, especially for the selection of goods and services.

Consulting with trademark agents in the UAE will ease your struggles when it comes to accurately classifying the goods or services your trademark represents. First, let us look into the important aspects regarding the selection of goods or services as per the Madrid Protocol of international trademark registration.

Goods & Services Guideline from Madrid Protocol 

The International Bureau of the World Intellectual Property Organisation (WIPO) has issued a guideline for trademark owners regarding the goods and services listed in applications for the international registration of a mark filed under the Madrid System. The trademark owners must file the international application through the Trademark Office of the home country (Office of Origin). According to Article 3(2) of the Protocol, the applicant must indicate the goods and services related to the mark to which protection is claimed while applying the basic mark.

Nice Classification of Goods and Services 

Both the UAE and the WIPO use the Nice Classification of goods and services. According to Article 3(2) of the Protocol,  the brand owners must indicate the corresponding class or classes according to the classification established by the Nice Agreement. The Nice Classification, established through the Nice Agreement (1957), is an international classification of goods and services applied for the registration of marks.

The Nice Classification categorises goods and services into 45 classes. It consists of 34 classes of goods and 11 classes of services. The classification headings broadly describe the goods or services in each class. You must select the appropriate class of goods or services your proposed trademark represents. If multiple classes apply, you need to select other classes of goods or services as well. Trademark agents in the UAE can help you to file the trademark under the right classes.

Filing a Trademark Application as per Nice Classification 

If you choose the Madrid Protocol system, your application will be based on the goods or services listed in your UAE trademark application or registration. You can include in your WIPO application all or some of the goods or services claimed in your basic mark. However, it is mandatory that the  goods or services listed in the WIPO application must be covered by the basic mark.

It means that you can limit your list to fewer goods or services but can’t broaden it or include entirely different goods or services than those covered in the basic mark. You can also submit a request to limit the list of goods or services for a particular country. For example, you can include Classes 3 and 25 in your international application but limit the list to only Class 25 for the US.

Examination Process by the WIPO 

 Once you submit the application for your international trademark registration, the WIPO will examine it. If the WIPO consider your list of goods or services to be too vague, incomprehensible, linguistically incorrect, or incorrectly classified, it will send a notice of irregularity to you or your trademark agent. The WIPO will ask you to refine or narrow your goods and/or services, provide more information, or indicate items are correctly classified in another class.

The designated contracting party, in which you seek protection, will also review the classification while examining your international registration. They will issue an Office action if items in the list of goods and services are considered to be too broad. The designated contracting party will suggest narrowing your goods and/or services or ask for more information. In all of these cases, it is critical to seek the advice of trademark agents in the UAE to take a proper course of action.

Consult with the Best Trademark Agents in the UAE 

Accurately listing the goods and services is highly critical for brand owners to easily gain international trademark registration through the Madrid Protocol system. It’s a complex process in general but trademark agents in the UAE such as Jitendra Intellectual Property (JIP) can make it easier for you. We can assess your trademark application against your product or service to identify the right classes as per the Nice Classification system. In this way, your application will be safe from any delay or rejection. Select our trademark services in Dubai to register a trademark without any hassle.

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