Madrid Protocol in the UAE: Top FAQs for Brand Owners

The UAE joined the Madrid Protocol for International Trademark Registration System at the end of 2021, which marked a revolutionary change in the country’s IP regime. Brand owners in the UAE are now able to register their trademarks in hundreds of countries through a single filing and in one official language. Trademark agents in Dubai can help brand owners to register their trademarks under the Madrid Protocol and file counter statements against the opposition if any are raised in the foreign member countries.

The Madrid System offers more flexibility, convenience, cost-effectiveness and wider protection for the UAE brand owners. However, many brand owners are in the dark when it comes to the rules of registering a trademark under the Madrid Protocol. Brand owners can learn more about the Madrid Protocol by going through the following Frequently Asked Questions (FAQ).

What is Madrid Protocol? 

The Madrid Protocol is an international trademark registration system that allows you to obtain trademark protection in several countries through a single filing. The Madrid Protocol is being administered by the World Intellectual Property Organisation (WIPO). By applying for trademark registration under Madrid Protocol, the brand owners can modify, renew or expand their global trademark portfolio through one centralised system.

How Many Members are Under the Madrid Union? 

The contracting parties of the Madrid Protocol constitute the Madrid Union. The Madrid Union is currently composed of 112 members, covering 128 countries. The members of the Madrid Union account for more than 80% of world trade, with potential for expansion as membership grows.

Who can use the Madrid System? 

You are allowed to register a trademark under the Madrid System if you have a personal or business connection to one of the System’s members. You must be either domiciled, be a citizen or have an industrial or commercial establishment in any of the 128 countries covered by the Madrid System’s 112 members. Talk to trademark agents in Dubai to know further about whether you are eligible for trademark registration under the Madrid Protocol.

Should I Register a Trademark in the UAE? 

Yes. You must have a basic mark in the UAE before applying for trademark registration under the Madrid Protocol. It means you must have either applied for or obtained a trademark with your home IP Office.

Should I Appoint a Trademark Agent? 

As per the WIPO, brand owners are required to appoint a local representative or a trademark agent to apply for trademark registration through the Madrid System. The local brand owners need the assistance of trademark agents in the UAE to obtain a basic mark. Most importantly, IP agents are required if a trademark is opposed in the case of international applications.

Should I Appoint a Representative for Each Country? 

No. You are not required to appoint a local representative for each designated member country. You need to appoint only one local representative to apply for trademark registration on your behalf. Hire the best trademark agents in the UAE to efficiently file your Madrid Protocol applications.

Can I get Protection in a Member Country at a Later Stage? 

Yes. You are allowed to extend the geographical scope of trademark protection by filing a subsequent designation. It allows you to add additional countries/regions to your International trademark registration even at a later stage. Subsequent designations become more relevant when new members become party to the Madrid Protocol and you wish to get your trademark registered in those countries/regions.

How Long does it Take to Register a Trademark with WIPO? 

The timespan for obtaining trademark registration under Madrid Protocol is 12 to 18 months. Sometimes an IP office of a designated member country may not respond to your application within this stipulated deadline. In case of no response, the application will be automatically assumed as granted. In short, you need to wait for 12 to 18 months to register a trademark with the WIPO under the Madrid Protocol. Trademark agents in the UAE can advise you further on the timespan for the International trademark registration procedures.

Can I Request WIPO to Correct any Errors? 

You are allowed to request the WIPO to correct certain types of errors recorded on the international register. WIPO allows the following types of errors to be corrected:

  • Errors made by WIPO
  • Errors made by the holder or holder’s representative
  • Errors made by an IP office

Can I Broaden the List of Goods & Services?   

No. Under the Madrid Protocol, applicants are not allowed to broaden the list of trademark classes for the basic mark. It is because the basic mark will be identical to the mark you are going to register in multiple International jurisdictions.

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.

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