A Guide to Protecting a Trademark in the EU via Madrid Protocol

UAE brand owners wishing to seek trademark protection in multiple European Union (EU) countries can opt for the Madrid Protocol of international trademark registration. Trademark agents in the UAE recommend Madrid Protocol as it is more economical than the national application route when registration is sought for two more countries in the EU region. The EU is a member region of the Madrid Protocol, which means you can designate the EU in your international registration for gaining unitary trademark protection in all the EU countries.

However, unlike other member countries, the EU region has a specific system for designating the Madrid Protocol applications. UAE brand owners seeking protection in multiple EU countries need to be aware of such challenges to effectively apply for trademark registration in the EU region. This article will explain in detail the features, requirements, procedures and conditions associated with Protecting a Trademark in the EU via Madrid Protocol. Read ahead to know further:

How does the EUIPO handle Madrid Protocol Applications?

European Intellectual Property Office (EUIPO) uses a different system for handling the designations for International trademark registrations under the Madrid Protocol. This system is different from the applications filed directly into the EUIPO. The EUIPO’s treatment of the Madrid Protocol stands out from that of other countries such as the US as the latter treats an international designation as far as possible like a nationally filed application.

The process starts when the EUIPO receives details of the international registration from the World Intellectual Property Organisation (WIPO). The EUIPO then will republish the bibliographic details and the class numbers in the EUTM Bulletin. However, it will not republish the list of goods and services. It will then take the following actions on the international trademark applications designated for the EU region:

  • Search report preparation (you need to file a special request to get a copy of the search report)
  • Examination of formalities such as seniority claims
  • Examining absolute grounds objections and oppositions

Objections to an EU-Designated International Application

If the EUIPO finds any objection on absolute grounds, it will send a notice to the WIPO with a two-month deadline for response. The notice will be forwarded to the applicant by the WIPO. However, the brand owners should submit the response directly to the EUIPO instead of the WIPO. They can submit the response through a local representative if the applicant is not in the European Economic Area.  The European Union along with Iceland, Liechtenstein and Norway constitute the European Economic Area.

All the correspondence with the EUIPO related to the absolute objections will be treated like the correspondence for a directly filed EU trademark application. The WIPO will be notified only about the decision of acceptance or refusal of the mark. The EUIPO will examine the designation on absolute grounds as it is a EUTM application. It will be sent to WIPO as either a provisional refusal or an Interim Status of the Mark.

Opposition to an EU-Designated International Application

The EUIPO allows filing an opposition notice to an EU-designated international trademark application filed under the Madrid Protocol. The opposition period is three months commencing one month following the date of republication in the EUTM Bulletin’s Part M, which is solely dedicated to international registrations. Any opposition claim filed before this period will be treated like it was filed on the first day of the opposition period.

Once it receives an opposition claim, the EUIPO will verify the admissibility of the claim. It will then notify the WIPO of a provisional refusal based on the opposition proceedings. In case of successful opposition, the EUIPO will inform WIPO of the international registration’s refusal. Consult with trademark agents in the UAE for navigating the challenges of opposition proceedings.

Conclusion of the Trademark Application Process

The trademark application process for the EU-designated international trademark registration can conclude in any of the following ways:

1. Lack of absolute ground objection, opposition, third-party observation

In this scenario, the EUIPO will issue a Statement of Grant of Protection to WIPO and it will be published

2. Absolute ground objection without any Opposition

In this case, the EUIPO proceedings will go on until the issuance of a final verdict. A Statement of Grant of Protection will be sent to WIPO if the objection is waived

3. Opposition without any objection on absolute grounds

The EUIPO will send a notice to the WIPO informing it about the final outcome. A second publication will happen if the opposition is rejected in whole or part. You can consult with trademark agents in the UAE for gaining more clarity on this scenario.

4. Both opposition and objection on absolute grounds

In this situation, the EUIPO will proceed with the opposition only for examining its admissibility. The EUIPO will halt the opposition proceedings until a final decision is derived on the absolute grounds of objection.

How can Trademark Agents in the UAE Help you?

The EU is a designated member of the Madrid protocol with a unique set of rules for registering international trademarks. Considering the complexity of the proceedings, brand owners are advised to seek the guidance of trademark agents in the UAE such as Jitendra Intellectual Property (JIP) to speed up the process. JIP can help you to navigate all the challenges of Madrid Protocol through a dedicated team of highly qualified trademark agents. Consult with us today to register your trademark under the Madrid Protocol without any hassle.

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