Madrid Protocol: Process of Filing International Trademarks In UAE

The Madrid System is the term commonly used to refer to the process of international trademark registration and is governed by two treaties, namely: 

  1. The Madrid Agreement Concerning the International Registration of Marks (1891) (the Madrid Agreement) and
  2. The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (1996) (the Madrid Protocol). 

The Madrid System is administered by the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland. As per the WIPO, the objectives of the Madrid System are two-fold: to facilitate the obtaining of trademarks in different countries through one filing and to enable the effective management of the resulting trade mark rights.

There are numerous benefits to opting for the Madrid Protocol route:

  1. Simplified application process:  it allows applicants in a member country to file a single international application in their home trademark office and pay a single set of fees.
  2. Cost- Effective option: Brand owners who seek to protect their trademarks internationally, can now pay a single set of fees in a single currency, reducing administrative and translation costs associated with multiple filings. Currently, 130 countries have adopted the Madrid Protocol and with a single application, an applicant can attain protection of their trademark in all these countries. 
  3. Ease of maintenance and renewal: The Madrid Protocol allows for the centralized management of international trademarks. Filing renewals or making changes to the registration can be done directly through the WIPO. 
  4. Centralized management: The Madrid Protocol offers a centralized database, known as the International Register, where trademark owners can access information about their international registrations. This simplifies monitoring, enforcement, and management of trademark rights across multiple jurisdictions.

With the rising popularity of UAE as a hub for commercial enterprise and cross-border economic transactions, UAE’s accession to the Madrid Protocol is a historic move albeit predictable.  The Madrid Protocol system came into effect in the UAE on the 28th of December 2021. This essentially means that foreign brand owners in Madrid member countries are now able to protect their trade marks by way of an International Registration and conversely, UAE brand owners can obtain trade mark protection in 127 countries and territories via the Madrid Protocol. Among the GCC countries, only the UAE, Bahrain and Oman are members of the Madrid Protocol. An applicant who wishes to protect their trademark within the GCC will have to make a single international application as well as separate national filings in Saudi Arabia, Kuwait and Qatar.  

The Madrid Protocol may not be appropriate in all cases so it is better to consider seeking the best advice from intellectual property lawyers. Parties must take into consideration the cost and strategic importance when structuring a trade mark filing program and determine whether a national filing, application for International Registration under the Madrid Protocol or a combination of both, is the most appropriate mechanism to secure trade mark protection. 

In the UAE, the Ministry of Economy is the competent authority to register trademarks. An applicant can submit an online application for trademark registration on the Ministry’s website. Applicants can apply for the international trademark application using the Madrid System through the national or Home Trademark Office, in the case of UAE, it will be through the Ministry of Economy.  All service fees must be paid through WIPO’s website and will be calculated according to the total number of countries in which the trademark is required to be protected. 

The Process to Register an International Trademark is as follows:

  1. Application for Trademark or Registered Trademark with Home Trademark Office as a Base  

An applicant must first file an application for trademark registration or have secured a registration for the mark (the Basic Mark) in their Home Trademark Office. On the basis of the Basic Mark, the applicant then submits an international trademark application through the Home Trademark Office, specifying the countries where the applicant requires protection. The Home Trademark Office will then review and certify the application before passing it to the WIPO. 

  1. Processing of international applications by WIPO 

The application is then processed by the WIPO and once approved the next steps will follow: 

  1. Recording of the Mark in the International Register
  2. Publishing of the Mark in the WIPO Gazette of International Marks
  3. Issuance of a certificate of international registration
  4. The application will then be sent to the national trademark offices in each of the designated Contracting Parties (dCPs) mentioned in the application.

 

  1. Examination by National Trademark Offices

The National Trademark Offices will conduct their own examination of the application in line with their local laws and trademark examination procedures. They will then accept or reject the application within a 12 to 18-month window, in accordance with their local regulations. WIPO will notify the applicant of the decision of each National Trademark Office and subsequently the decision is recorded in the International Register. If the National Trademark Office approves the application in a country, it will issue a statement of grant of protection. The International registration has a validity of ten years and renewal of the trademark can be done directly through the WIPO. An applicant can also appeal a refusal, in accordance with the laws of the relevant country/dCP.

The Madrid System can be considered a ‘one-stop shop’ for trademark holders to obtain and maintain trademark protection in foreign markets. Some of the key considerations to keep in mind when filing for the International Registration of a trademark include: