Madrid Protocol

Introduction

The Madrid Protocol, adopted in the year 1989, has devised a one-point solution to file, register and maintain one’s trademark in more than one country by filing a single application under this protocol, provided that the targeted countries are the members of the Protocol. The Madrid Protocol entered into force on December 1, 1995 and came into operation on April 1, 1996. This protocol is administered by the World Intellectual Property Organization (WIPO) and more than 120 countries from across the world have joined it.

Advantage of Madrid Protocol

  • Provides for a single application process to apply and obtain Trademark registration in multiple countries at once.
  • Simple, easy, convenient and cost-effective method.
  • Less time consuming process.
  • More member country(s) of the Madrid Protocol can be added in future under the same international registration.
  • Renewal of Trademark, changes in the Trademark holder’s details and maintenance of the Trademark can be done in its entirety at once.

Disadvantage of Madrid Protocol:

  • International application and registration of Trademark under the Madrid Protocol can extend only to those member countries.
  • Any change in the basic application shall have an impact in the international application.
  • Assignment or transfer of ownership of the Trademark to a person or entity of a non-member country of the Madrid Protocol is prohibited under the rules of the Madrid Protocol.
  • Only the application for filing the International Trademark shall be under a single window, thereafter, process such as examination, hearing and publication etc., shall be as per applicable laws and procedures of each member country.

Madrid Protocol – UAE

The UAE Cabinet has recently approved accession to the Madrid Protocol system, it shall be joining the Madrid Protocol for trademark registration system by the end 2021 or by the start of 2022. UAE, being a country open for lot of foreign investments and a platform for various start-ups, have concluded to join hands with the Madrid Protocol after years of discussion to file international trademark in over 120 different member countries via a single application.

Upon becoming a member to the Madrid Protocol, UAE applicants shall be given access to the world market to protect their mark by a single application.

Madrid Protocol – Process

  1. Once the Madrid Protocol is in force in UAE, the responsibility of the UAE Trademarks Directorate in the UAE Ministry of Economy will be confined to verification of the international trademark applications and forwarding the same to WIPO.
  2. The applicant in UAE seeking international registration of the Trademark should have either applied for a Trademark registration or hold a valid registered Trademark in UAE.
  3. The UAE Trademarks Directorate confirms the details of the Applicant’s Trademark and then forwards the application to WIPO.
  4. WIPO checks whether the basic filing requirements have been fulfilled, and if so, enters the mark in the international register granting international registration and forwards the same to the concerned designated member countries’ Trademarks Directorates.
  5. Once the International Registration Application is received by the Trademark Directorate of the designated member country, it carries out the following process:
    • Examines the Trademark applied for registration and can either accept or reject the same. The Trademark application may be rejected on the following grounds:
      • Conflicts with existing rights of a third party,
      • Lack of distinctiveness of the mark,
      • Mark is descriptive or generic, and
      • Mark is likely to cause confusion.
    • Call for a hearing if more details and explanation are required with regard to the applied Trademark;
    • Publish the Trademark in the official gazette for third party opposition; and
    • Proceed to grant registration if no opposition is received within the time given from any third party.
  6. The member countries have the complete discretion to decide whether or not to grant protection to the international trademark applied for registration in their territories.
  7. If the member country does not make any objection, within a period of 18 months from the date of application of the international trademark, the mark shall be deemed to be registered in such territory of the member country, as if the same has been registered directly with the Intellectual Property office of that territory.

Conclusion

To conclude, Madrid Protocol shall open more opportunities to the UAE trademark owners in the international market to build and expand their brands among the member territories of the Madrid Protocol. The Madrid System of international trademark registration shall be inclusive and shall offer entities and individuals of UAE a simple, affordable and efficient way of obtaining registration of and maintaining their trademarks.

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