A Look at Possible Outcomes of Trademark Examination by Madrid Protocol Member Countries

The regime of trademark registration in the UAE has become more seamless as the local brand owners are gearing up to register their international trademarks through the Madrid Protocol system. The UAE joined the Madrid Protocol of International System on 28th September 2021 and started accepting international registration (IR) applications from 28th December. It means the local brand owners are new to the system and require the expert advice of trademark agents in Dubai to navigate the procedure.

Brand owners need to be accustomed to the procedures, requirements and conditions for protecting your international trademarks through the Madrid Protocol. You must specifically understand the likely outcomes when their trademark application is examined by regional IP offices. Read ahead to know further:

An Introduction to Madrid Protocol Process

The process of International trademark registration begins by filing an application at the UAE Trademark Office. Once the domestic application is filed, you can submit an international application to the World Intellectual Property Organisation (WIPO). The international application must also be submitted to the UAE Trademark office. The Trademark Office will then forward it to the WIPO. The WIPO will then examine the international application for formalities only. It means WIPO doesn’t grant or refuse international trademark applications.

The organisation will examine the application only to verify information such as the applicant’s name & address, quality of the image or mark, and at least one member country is designated (apart from the country of origin). WIPO will also check whether the applicant has classified the list of goods and services as per the NICE Classification. If any irregularity has been found, WIPO will send you an irregularity notice with instructions on how to remedy the errors.

Examination by Regional IP Offices

If there are no irregularities in the application, WIPO will record your trademark in the international register. WIP will then notify the office of each member designated in your international application.  The IP Office of each designated contracting party will carry out a substantive examination of the international trademark in question.

The examination will be conducted the same way as the IP offices conduct national applications as per the domestic trademark laws. The IP offices will issue a decision on the trademark within 12 months (18 for some members) from the date WIPO notified the Office of its designation. Consult with trademark agents in Dubai to understand the procedures further.

Possible outcomes of Examination by IP Offices

Once the IP offices carry out an examination on the trademark, you can expect certain outcomes. There are only three possible outcomes of the examination by a designated member’s IP Office. The possible outcomes are stated below:

1. You Receive No Response

In certain situations, the IP office of the designated member may not issue its decision within the time limit of 12 or 18 months. WIPO considers ‘no news’ from the IP offices as ‘good news. The absence of a response within the time limit will be considered tacit acceptance, which means the IP office has granted protection for your trademark in that territory.

In case of tacit acceptance, WIPO will indicate the grant of protection in your trademark record in WIPO’s official status database (Madrid Monitor). The following words will be written in the Madrid Monitor against your record: “The refusal period has expired and no notification of provisional refusal has been recorded (application of Rule 5 preserved)”.

2. IP Office issues a statement of grant of protection

If there is no ground for refusal, the IP office of the designated member country is required to issue a statement of grant of protection for your trademark. The statement of grant of protection is similar to a national trademark registration certificate issued by the UAE Trademark Office or any other regional/national IP offices. If Cuba or Japan is among the designated countries, you will receive a request to pay the second portion of the individual fee along with the statement of grant of protection. Consult with trademark agents in Dubai to proceed further from this stage.

3. You receive a notification of the provisional refusal

IP Offices that find grounds for refusal (entirely or partially) are required to send a provisional refusal to WIPO. WIPO will then transmit the provisional refusal to the holder of the trademark. The provisional notification of trademark refusal will contain the reasons for the refusal, any further steps that are required (including the time limit to respond), review or appeal options, and whether or not the holder is required a local agent for further assistance.

Avail of Jitendra Intellectual Property’s Trademark Services

Madrid System of International Trademark Registration is an effective and seamless system for ensuring trademark rights in multiple international jurisdictions. It enables the UAE brand owners to obtain trademark protection in various territories cost-effectively through a centralised system. However, local brand owners need the assistance of trademark agents in Dubai such as Jitendra Intellectual Property (JIP) to navigate the challenges of the international trademark registration system.

JIP is an IP firm offering both national and international trademark registration services in the UAE. We have a team of qualified & experienced IP experts who are well-versed in the UAE Trademark Law as well as the trademark laws and procedures of Madrid Protocol contracting parties. Our trademark registration services will come in handy for you to ensure trademark protection in multiple international territories.

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