Trade mark registrations under the Madrid Protocol and the UAE: what local and international brand owners need to know

In Brief:

1. The Madrid Protocol enables brand owners in one member country to protect their trade marks in any of the other member countries by filing a single application and paying a single set of fees  through their national trade mark office and via the World Intellectual Property Organisation (WIPO) in Geneva, Switzerland.
2. The Madrid Protocol came into effect in the UAE from 28 December 2021. Foreign brand owners in Madrid member countries can now obtain trade mark rights in the UAE through an International Registration and, conversely, UAE brand owners can utilise the Madrid Protocol to obtain trade mark protection in 127 other countries and territories
3. While the Madrid Protocol offers a streamlined means to secure trade mark rights across multiple countries, there are both advantages and disadvantages that must be taken into account when also assessing national applications and deciding which mechanism to use.

Overview

For many years, the Madrid Protocol has been a very popular means for brand owners to secure trade mark rights in various countries around the world by filing a single application and paying one set of fees.

Following the accession of the UAE to the Madrid Protocol in 2021, brand owners in the United Arab Emirates can use the Madrid Protocol to protect their trade marks in other Madrid Protocol countries by filing a single international application and paying a single set of fees.

Similarly, countries that are members of the Madrid Protocol will be able to file international applications that designate the UAE. As of May 2022, over 2,000 International Registrations have designated the UAE. It is worth noting that, from a regional aspect, the Gulf Cooperation Council (GCC) comprises the UAE, Bahrain, Kuwait, Oman, Qatar and Saudi Arabia. Of these, only the UAE, Bahrain and Oman are members of the Madrid Protocol. National filings are therefore required in Saudi Arabia, Kuwait and Qatar.

While International Registrations may be possible in the UAE (and also Bahrain and Oman), there may be instances where it is more cost effective, strategically important, or both, to file a national application directly in the UAE, or other country or territory of interest, rather than an International Registration via the Madrid Protocol.

Various factors should be carefully considered when structuring a trade mark filing program and determining whether a national filing, International Registration under the Madrid Protocol, or a combination of both, is the most appropriate mechanism to secure protection for the relevant trade mark.

1. What is the Madrid System?

Background

The ‘Madrid System’ refers to the international registration of trade marks and which is governed by two treaties:

• The Madrid Agreement Concerning the International Registration of Marks (1891), commonly referred to as the ‘Madrid Agreement’; and
• The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (1996), commonly referred to as the ‘Madrid Protocol’.

All members of the Madrid Agreement are also members of the Madrid Protocol. The Madrid Protocol now governs all international applications and registrations.

According to the World Intellectual Property Organisation (WIPO), the Madrid System has two objectives:

1. To facilitate the obtaining of trade mark rights in multiple countries (an International Registration) through one filing; and
2. To enable the effective management of the resulting trade mark rights.

As of May 2022, approximately 1.3 million trade marks have been submitted through the Madrid System.

Member countries

As at May 2022, there are 112 members of the Madrid Union covering 128 countries and territories.

The UAE become the 109th member of the Madrid System when it joined the Madrid Protocol. This entered into force in the UAE on 28 December 2021.

Other countries periodically become members. For example, the Madrid Protocol came into force in Jamaica in March 2022 and will come into force in Chile in July 2022.

2. How does an International Registration under the Madrid Protocol work?

Overview

Unlike the European Union Trade Mark which is a single trade mark registration that covers 27 member countries, an International Registration under the Madrid Protocol is more accurately described as a ‘bundle’ of national trade marks that are administered under one filing. 

The administration and maintenance of the International Registration is handled centrally via WIPO but the resulting trade mark right in each country or territory exists in the same way as if it had been a trade mark filed directly in the national trade mark office of that country.

Stages to secure an International Registration

The process to secure an International Registration covers three stages. These are:

3. Benefits of International Registrations under the Madrid Protocol

Utilising the Madrid Protocol to file an International Registration offers a number of benefits to brand owners.

Single language

• An International Registration can be filed in one of the three official languages (English, French or Spanish) and without the need to use the local language of the various designated countries.

International scope

• It is possible to designate a large number of countries and territories around the world.
• As at May 2022, there are 112 members of the Madrid Union covering 128 countries and territories.
• Collectively, these member countries account for approximately 80% of the world trade. New members periodically join Madrid, such as the UAE (2021), Jamaica (2022) and Chile (2022).

Convenience

• The objective of the Madrid System is to facilitate an easy and straightforward means for brand owners to secure trade mark rights around the world.
• It is possible to file one application and, through one filing and one trade mark representative, obtain trade mark protection in multiple countries and territories around the world.
• Unless there an objection or opposition arises in the designated countries or territories, there is no need to appoint local trade mark counsel in each of the designated countries or territories.
• The resulting scope of protection under the International Registration can be maintained centrally through WIPO by one trade mark representative.
• The scope of protection of an International Registration can be extended at any time by the ‘adding’ new countries or territories though Subsequent Designations. In this way, new countries and territories of interest to a brand can be added when needed (usually as the brand expands).
• Assuming no opposition, there is a fixed examination period (either 12 months or 18 months) by which the examination must be completed.

Cost effective

• The official fees for an International Registration will vary and depend on a variety of factors. These include the number of designated countries or territories, which countries or territories they are, and the number of classes claimed.
• However, there are cost savings in one set of fees under an International Registration as compared to direct filing national applications since there is no need to appoint a trade mark representative, and incur professional fees, in each designated country or territory. This would only be required in the event that an objection was issued by the national trade mark office, or an opposition filed by a third party.
• The ability to centrally manage an International Registration through WIPO means potential costs savings in the maintenance of the International Registration. This includes renewals, or other administrative matters such as recording changes of name or address, which would otherwise need to be done on a country by country basis.

Powers of attorney and formality documents

• For many countries, the use of an International Registration rather than national country filing program means that the requirements of powers of attorney or other formality documentation can be avoided.
• While these may be required in the event of an objection or opposition in a particular designated country, the ability to avoid these at the outset provides an initial saving in both time and cost.

4. Disadvantages of International Registrations under the Madrid Protocol

Utilising the Madrid Protocol to file an International Registration offers a number of benefits to brand owners. However, there are various disadvantages that should be taken into account by brand owners in deciding whether to seek trade mark protection through an International Registration or via direct national applications.

Central Attack

• An International Registration is based on a ‘Basic Mark’ and is reliant upon that mark for a period of five years from the date of registration of the International Registration.
• If, in that five year period, the Basic Mark is cancelled or abandoned (for example, where there was a successful opposition to the Basic Mark application), then the International Registration will also be cancelled – a Central Attack.
• Where an International Registration suffers a Central Attack, it is possible to ‘transform’ each of the designated countries or territories into national rights. However, the cost of this outweighs any cost benefit obtained by filing the International Registration at the outset rather than national applications.
• The recommended pre-filing clearance searches (discussed below) can help identify any third party marks in the ‘home’ jurisdiction that may pose a risk to the registration of the Basic Mark and, as a result, minimise the risk of a subsequent Central Attack.

Meeting deadlines

• The deadlines for responding to objections issued by national trade mark offices can often be very short. This can present problems in appointing a local representative in time to response to the objections, particularly if there are formality requirements such as powers of attorney.
• Furthermore, the International Registration does not override local laws. While an International Registration means that a national right can secured in various countries without the need to have a legalised Power of Attorney (as would be otherwise the case if the application was to be filed nationally), it is often the case that a legalised Power of Attorney is required to enforce the trade mark rights against a third party.
• For example:
  • The opposition period in the UAE is a non-extendable period of 30 days. Where the opponent is based in the UAE, a notarised Power of Attorney is required to file the opposition. If the opponent is based outside the UAE, then a legalised Power of Attorney is required.
  • As of May 2022, the relevant Power of Attorney must be in place at the time the opposition is filed – it is not possible to file the opposition to meet the 30 day deadline and then submit the notarised or legalised Power of Attorney later.
  • Given that obtaining a legalised Power of Attorney from overseas can often take longer than 30 days, there is a risk that the opposition period would pass and the third party would then have a registered trade mark right. Cancellation proceedings against a trade mark registration would be required.
  • This scenario may not have arisen where a national application was filed and with the supporting Power of Attorney already in place.

Time to registration

• The time taken to process applications for International Registrations can vary dramatically by country, and noting that some countries have up to 12 months to complete examination of an International Registration while other countries have up to 18 months.
• In some countries, the time to registration for an International Registration is shorter than for a national application but, in many countries, a national application will proceed to registration faster than an International Registration designating the same country. This may be important in the case of franchise or distribution agreements.

Scope of recognition

• Not all countries are members of the Madrid Protocol (for example, Kuwait, Qatar and Saudi Arabia) with the result that International Registrations are not possible in those countries. National applications would be required in those countries.
• However, even where International Registrations are possible, the recognition in those rights may vary by country. This can pose issues for enforcement. For example:
  • There are various countries in which national legislation on enforcement has not been updated to recognise International Registrations.
  • In other countries, such as China, WIPO certificates of registration are not recognised.
  • In these cases, it may be necessary to obtain supporting certificates from the national trade mark offices (and which would not have been required had national trade mark applications been filed). For China, securing the supporting certificate incurs additional fees and may take a number of months to be issued. This could pose an issue where the supporting certificate is required for infringement or enforcement proceedings.

Scope of the Basic Mark

• An International Registration will be limited to the scope of what has been claimed for the Basic Mark. Equally, what is an acceptable mark and/or specification of goods or services in one country does not mean that this will be the case in all countries.
• Should the Basic Mark be in a jurisdiction that requires precise description of terms, or on which use is a prerequisite to obtain registration (for example, the United States), then there may be greater flexibility and ability to file more broadly in other countries by using national applications instead.
• Conversely, if countries with stringent examination procedures as to specifications (such as the United States) are of interest, it may be better to file for a national application in the United States and use an International Registration for the other countries of interest).

5. Pre-filing clearance searching

Whether trade mark protection is sought in a particular country through an International Registration or via a national application, it is essential that pre-filing clearance searches are undertaken for the proposed mark.

These clearance searches can help identify earlier third party marks that may pose a risk to either the registration or the use of the proposed mark in a particular country.

Whether a comprehensive ‘full availability search’ is undertaken, or a more limited ‘screening search’ that only looks at identical or near identical marks on limited classes, will depend on a variety of factors and can differ for each trade mark filing program.

In all cases, pre-filing clearance searches can help minimise the risk of conflict with earlier third parties and the associated time and cost that would be incurred.

6. Factors to consider for International Registrations

Whether a filing program is based on national application, an International Registration, or combination of both, will vary in each case.

Important factors to consider in the decision are:

• How many countries/classes are to be designated? What is the cost of an International Registration compared to national applications?
• Is there a particular date by which registration is required? Are national applications faster in the countries of interest?
• How will the trade mark be used in each country? For example, local language variants may require separate national applications.
• Are any classes or terms prohibited in certain countries? For example, Class 33 for “alcoholic beverages” is not recognised in certain countries.
• Are national registrations more easily relied upon than International Registrations in the countries of interest? That may justify national filings in certain countries (for example, India and China).
• Is the proposed mark sufficiently distinctive for all the countries or territories of interest? Just because it has been accepted in one designated Contracting Party does not mean it will be accepted in all others.
• Are legalised Powers of Attorney required to enforce trade mark rights in a country of interest? If so, consider putting a legalised Power of Attorney in place, even if an International Registration is being use to designate that country. This can minimise the risk of missing non-extendable deadlines (such as opposition deadlines in the UAE for example) and where legalised (or notarised) Powers of Attorney are required.

7. Conclusion

While the Madrid Protocol offers a number of advantages, there are also a number of potential disadvantages to be taken into account. 

For this reason, using the Madrid Protocol to secure International Registrations for a trade mark filing program is not a ‘one size fits all’ solution but needs to be considered with reference to the particular facts of the filing program. In this way, a bespoke filing program can be formulated which balances the available budget of the brand owner against the scope of protection that would be obtained.

If you would like more information, or have any questions, please contact James Dunne, Head of Trade Marks and Brand Protection (j.dunne@hadefpartners.com), send an email to trademarks@hadefpartners.com or get in touch with your usual Hadef & Partners contact.