Investopia Summit: The First Trademark Registration After Uae Accesion To The Madrid Protocol

27th June, 2022 - 7:06 am Categories: Trademark 0 Comments

The International framework on Madrid Protocol creates a unified platform for attaining Trademark registration and protection across the various countries which has acceded to it by way of a single application. The UAE Ministry of Economy has registered the Investopia summit as its first trademark under the system by, as the country is seeking to secure its position in the market as a major contributor in the field IP. Investopia is one of the initial set of projects which are part of the developmental initiatives under the “Projects of the 50” scheme of the UAE Government. “The aim of the project is to increase the inflow of foreign direct investments to Dh550 billion (149.76bn) by 2030 and Dh1 trillion by 2050.”

The Madrid Protocol is an instrument of the World Intellectual Property Organization (WIPO), one of the agencies under the aegis of the United Nations, with its headquarters in Geneva, Switzerland. The system is an efficient and cost-effective international system for global protection and registration of trademarks. Benefits that come in hand by registration of the application through the protocol are numerous. It helps in saving time, cost and resources as it provides centralized system by filing one application, instead of multiple applications and all in one language, that cuts the costs of translation. The accession to the protocol, would lead to greater economic developments in UAE which would expand the scope of IP related activities and will help corporates to take their brands to other countries. It will also immensely benefit the local entrepreneurs to secure a global brand image for their marks and increase accessibility to wider arenas.

APPLICATIONS UNDER THE MADRID SYSTEM

Every international application which is based on national or regional applications or registrations should be filed in Form MM2 in the system. In case of an application filed in United States of America it should also be accompanied by Form 18 which shows the use of the mark as this is an essential criterion for registration of marks in US.

The guidelines for the implementation of the Protocol are released by the UAE Ministry of Economy in the early phase of 2022.

ADVANTAGES OF REGISTRATION THROUGH THE PROTOCOL

After the implementation of the Madrid protocol the UAE Trademarks Directorate would be endowed with the responsibility of certifying the international applications and forward them to WIPO for further processing of the application which includes formal examination, identification of the class of goods and services, trademark registration, publication in the International Gazette and notification to the respective member countries.

Singular and unified system of application

Separate applications need not be filed by applicants and a single set of fees is only necessary to be paid. A singular application not only would reduce the complexities in checking of dates and listing of multiple countries but also help to accrue the benefits of covering all the Madrid member states which account for 80% of global trade.

Centralized management of trademark

The merits of registration through the protocol extend even after the attainment of registration, as the protocol provides for renewal of registration after every 10 years through single application in the WIPO. Similarly change in the particulars of registration (like change in case of the name, address or changes assigning rights to third party) can also be rectified by way of a singular application. The application through Madrid also allows addition of countries/regions to the international trademark even at a later stage. Whenever any new country becomes part of the protocol they can also be added as subsequent designation. However the class of goods and services cannot be expanded and there can be no addition to it.

On the other side of the coin, along with the advantages that it provides, it also has its own drawbacks. One significant demerit among that is, the examination of application is independent in each member country and therefore domestic laws and procedures are applied which would vary from one jurisdiction to another. This can bring about confusions and complications in the form of procedural hurdles. Also, the timeline for filing responses is short and it can be cumbersome to complete all the requirements in the short span. Certain countries are also still lagging behind in the amendment of their national laws to incorporate international registration and this brings about difficulties in enforcement.

CONCLUSION

UAE’s decision to accede to the protocol is a welcome move. However, it still has a long way to go for its implementation. The Trade Mark office is still at the stage of incorporating the significant amendments that are made to the UAE Trade Mark law and thus Madrid related changes are taking time. The registration of The Investopia Summit as its first trademark is the new and recent move in this regard.

Several applications are received as international applications in the Ministry from foreign applicants designating UAE in their Madrid applications but most of them are still in the processing stage. More than 500 international registration applications from USA, Japan and Europe designating UAE in its registration has been already file with the WIPO. The cost of registration with respect to one class of goods or services is coming up to a meagre amount of 1630 Swiss francs (approximately US $1700) and this is one of the reasons for its success. The application fee is similar in case of renewal of the international registration in which UAE have been designated.

Author: Ancy Jacob, Co-Author: Abhijeet Deshmukh Associate Partner and Advocate – Litigation, at Khurana & Khurana, Advocates and IP Attorney, in case of any queries please contact/write back to us via email chhavi@khuranaandkhurana.com.