The UAE Cabinet Approves Registration of Marks under the Madrid Protocol

The long-anticipated approval of the UAE cabinet for joining the Madrid Protocol for trademark registration systems has been accorded recently and is likely to come in force by this year-end or early 2022.

To strengthen and promote Intellectual Property Rights, the authorities planned for using the International Madrid Protocol Administrative System that allows filing, registering and maintaining Trademarks in over 120 different member countries. Amongst the GCC nations, only Bahrain and Oman are presently a part of the Madrid Protocol.

The UAE Trademark Office (TMO) will only certify international applications and forward those to the World Intellectual Property Organisation (WIPO) electronically once the Madrid Protocol is enforced in the country.

The WIPO will then carry out the subsequent processes involved including conducting examination, goods or services classification, trademark registration, publishing the trademark in the International Gazette and notification to the designated countries.  There is usually a strict deadline given by WIPO within which the member countries of the Madrid Protocol must decide if the international trademark in their territories can be granted.

The International Trademark Registration normally takes around 18 months from the date of notification of the registration subject to no objection from individual designated members. The trademark will then be registered within the territory of that member in the same way as it gets registered directly with the local IP office.

Once the UAE joins the Madrid Protocol, UAE applicants will be allowed to obtain and protect their trademarks around the world through cost-effective and user-friendly procedures for trademark applications and registrations in many countries in a centralized manner.

What is the Madrid Protocol? 

The Madrid Protocol is a system of international registration of trademarks that permits the brand owners to apply and maintain protection in 124 countries through one single procedure. The levels of protection, however, can differ in different territories.

The Madrid System for the international registration of trademark rights in multiple jurisdictions is administered by the WIPO headquartered in Geneva.

The registration of Marks under the Madrid Protocol is cost-effective and the application can be done in one language. A cost savings of 30% to 40% may be realized compared to national filings.

What are the Benefits of Madrid Protocols? 

The use of the Madrid System for companies with a global presence provides several benefits including

• Cost Savings potential
• The simple and easy filing process
• Streamlined management with centralized filing, registration and maintenance
• Use of one language as per applicant’s choice
• No need for local representatives in individual designated countries
• Easy and less cumbersome documentation with minimum formalities e.g no requirement of POA
• Provision for extension of geographical protection of an international mark as and when necessary for commercial interests, any new jurisdiction can be easily added
• The examination period is fixed and finite either 12 months or 18 months
• The application receives automatic protection whenever there is no objection raised
• Country specific local representatives are not warranted if no objection is raised by national trademark authority or by third parties
• Easy renewal of Trademark
• Easy incorporation of Mark holder’s details

What are the Disadvantages of using the Madrid Protocol?

Though the Madrid Registration system offers multiple benefits, it also comes with its share of anomalies, complications and vulnerabilities, both in terms of the process and the protection offered.

• Can only be extended to the member countries
• As the registration is based on home filing for the initial five years, any cancellation or abandonment of the home filing renders the international registration automatically stands cancelled
• Even if a mark is accepted in the home jurisdiction, it doesn’t necessarily mean that it would be accepted in every designated country in the Madrid registration application due to the non-circumvention of WIPO in local trademark laws
• Response deadlines can be very short posing difficulties in timely action and appointment of local representatives for responding to actions
• The wide variance in application processing time
• Enforcement problems in countries where national trademark laws have not been revised to recognise the international registration system e.g. African continent
• Also, some anomalies exist in certain key territories

What is the Process of Registration of Trademarks under the Madrid Protocol?

The following three important steps are involved in registering a trademark through the Madrid System.

Step 1: Application through Office of origin

An international application needs to be filed,  Form MM2 through the “home” IP or Trademark office  known as Office of origin, certifying your international application and forward it to WIPO online

Step 2: Examination by WIPO

WIPO carries out a formal examination of the international application and does not refuse or grant trademark protection. WIPO only checks the information provided in international applications. Once the application complies with the requirements of WIPO, the Mark is recorded in the International Register and subsequently published in the WIPO Gazette of International Marks making the applicant the holder of an International Registration.

WIPO then sends a certificate of registration with a notification to the IP Offices in all the territories where the applicant wishes to have the trademark protected and as given in the international application.

Step 3: Substantive examination by national/regional IP offices

Once notification is received from WIPO, the IP offices of the territories where protection is sought conduct a substantive examination of the trademark as per the prevailing trademark laws in those territories. Every individual territory through its IP office decides if the trademark can be protected in that territory or not. It usually takes around 12 to 18 months.

WIPO then sends an intimation informing the decision of the individual territories. In case trademark protection is refused by any territory either totally or partially, this will not affect the decisions of other IP offices.

If trademark protection is accepted by an IP office, it states a grant of protection. The international registration of trademarks bears a validity of 10 years in each designated territory making the registration renewal through the Madrid System compulsory every 10 years.

Specialized online tools and resources are made available by the Madrid system to facilitate the filing and management processes of an international trademark registration providing complete control to the trademark holder at every stage of the lifecycle of the trademark.

How does a company decide on the Madrid System?

All companies with global operations usually eye for access to foreign markets with huge business potential such as India, China, the US and Japan and the Madrid Protocol can play a pivotal role in realizing this ambition by enabling these companies to cost-effectively register trademark rights in these member countries. 

The following considerations however must be made before the start of the application process for determining the cost benefits and effectiveness of brand protection.

• If a company is aiming for registration in only one or two countries, national filings may be cheaper compared to this all-inclusive international protocol.
• The requirements of this protocol are stricter in some countries and may cost the companies more.
• In some countries, the IP rights obtained through this protocol may be more vulnerable compared to national registration.

The Fine print

Despite some challenges, anomalies and inconsistencies present in the registration process, the Madrid Protocol is a mature, effective and widely accepted system for getting IP rights in many international jurisdictions simultaneously. It follows a year-long developed solid trademark registration strategy enabling brand owners protection of rights in many territories affordably.

The UAE trademark owners will certainly derive lots of opportunities to build and expand their brands in the international market. It is believed that the recent approval of the Madrid Protocol will stand Dubai and the UAE in good stead in IP protection and international recognition.

At IMC, we are closely monitoring all the developments in the UAE IP system and will be more than happy in providing our professional and expert services to our clients in this regard.