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The Madrid Protocol secures brand owners' trademark rights across jurisdictions. Image Credit: Shutterstock

October 28 marked an important date in the UAE’s trademark registration system. It was the day the country presented its instrument of accession to the Madrid Protocol, which deals with the international registration of trademarks. The Madrid System would come into force in UAE on December 28.

The Madrid System is a centralized system for international registration of trademarks, which is enforced by WIPO (World Intellectual Property Organisation) in Geneva. The Madrid Protocol and the Madrid Agreement constitute the Madrid System of International Registration of Trademarks. The protocol was adopted in Madrid in 1989. Prior to the UAE, Bahrain and Oman were the countries in the GCC to join the Madrid Union.

Trademarks are important in building the reputation of the company, its acts as a catalyst in increasing the value of companies, especially startups. Registration of trademarks is very important for any kind of business, irrespective of size and creates brand recognition, whereby making the services or products distinctive from its competitors and protecting those marks from being copied.

Secure trademark

In the UAE, the registration of trademarks is comparatively expensive and national registration is a must to afford protection. This situation would be changed once the Madrid system comes into force. The brand owners would gain the protection of their marks in more that 120 member parties by filing one application with a single office, in one language with one set of fees in one currency, which is the Swiss franc.

The International Bureau of the WIPO, which administers the Madrid System, coordinates the transmittal of the registration applications, renewals, other requirements and documentation to the contracting parties. It is to be noted that even though an international registration may be issued, it is the right of the respective party country to decide whether or not they would grant the protection for the mark registered in that country.

Do it multiple times

Once allowed, then it would be given the protection as if it was registered in that particular country. Previously, brand owners in the UAE had to register their mark not only in the UAE, but also in other countries individually where they wanted protection.

With the implementation of the Madrid system, there would be centralized registrations. The brand owners would not only have to file multiple applications but also pay fee in each place.

When an application is submitted for registration, they would undergo scrutiny and be published in the Gazette in case of any opposition, in case of any opposition, either the mark would be modified in the case of startups and if they are well-known marks that haven’t been registered before, someone with malicious intentions may have registered. Then, the company would have to file for the cancellation of the mark and then apply for registration. This is not only time consuming but expensive.

With startups, if they have to file multiple applications and these face opposition, and if they have to modify the mark to be able to qualify for registration, then there are chances that the marks in various countries could lose their uniformity.

Too onerous a process

When national registrations have to be done, brand owners would have to appoint their representatives in the respective countries. This could also be avoided by the unified registration. A trademark registration is valid for a period of 10 years and renewed after its expiry. A centralized system also makes the renewal of trademarks easier and cheaper.

If the registrations have to be renewed at various jurisdictions, there are chances that the deadlines could be missed. Another benefit of registering with WIPO is that, that the System allows extension of the existing trademarks registration to other countries. Or more of the existing classes of interest could be done by filing a subsequent designation, either at the UAE Trademark Office, which is in the Ministry of Economy, or with the WIPO directly. The effective date for the existing registration would be the date of receiving the request.

Not only renewals to trademark registrations, but other amendments including change of ownership, recording assignments, etc. could be done at one place. The lockdown that the entire world went through as a result of the pandemic caused much difficulties for brand owners, where registrations or renewals had to be done separately in different countries. It was not uniform even then, as when one place was opened up, the others were still under. With the Madrid System, such issues could be resolved.

This major step initiated by the UAE would help the brand owners to protect their trademarks at an affordable price, but also be a boost to development by fostering businesses.