United Advocates

Expediting Your International Trademark Registration Under the Madrid Protocol

The Madrid Protocol has streamlined the process of international trademark registration, allowing brand owners to register their trademarks in over 120 countries with a single application. However, it is essential to adhere strictly to all mandatory requirements and standard procedures to avoid delays. Consulting with trademark agents in the UAE can help you navigate the process efficiently. Here are some tips to expedite your international trademark registration under the Madrid Protocol:

Properly Apply for the Basic Mark

Your existing trademark registration or application in your home IP office forms the basis for your international trademark registration, known as the basic mark. Before filing the basic mark, conduct a thorough trademark search to ensure compliance with the laws and standard procedures of your home IP office. If applying from the UAE, your home IP office will be the UAE Ministry of Economy.

Since your international trademark registration depends on the basic mark, any risk to the basic mark will impact your international registration. This dependency lasts for five years from the date of international registration. If your basic mark is cancelled or abandoned within this period, your international registration will also be cancelled or abandoned. Therefore, it is crucial to properly register your basic mark with your home country’s IP office.

Learn About the Laws of Designated Countries

The Madrid Protocol allows you to protect your trademark in over 120 member countries, each with its own trademark laws. Non-compliance with the legislation of any designated country can delay the process. For example, in the United States, the trademark law requires a declaration of use to be filed between the fifth and sixth years following the registration date. This declaration must include evidence that the trademark is being actively used in commerce. Failure to file this declaration can result in the cancellation of the trademark registration. Therefore, when registering an international trademark under the Madrid Protocol, it is essential to be aware of and comply with specific requirements like this in designated countries to avoid jeopardizing the registration.

Be Wary of Opposition in Designated Countries

Prepare for the risk of opposition from designated countries. The World Intellectual Property Organization (WIPO) does not override the trademark laws of member countries, allowing third parties to oppose your application on a country-by-country basis. Even if your home IP office accepts your trademark application, it may face opposition in other designated countries.

Navigate Regional Challenges

Certain jurisdictions, such as those in Africa, pose unique challenges for expediting your international registration. Although the Madrid Protocol has been ratified by 22 African countries, its reach extends to 38 countries through the African Intellectual Property Organization (OAPI). However, only 9 of these countries have properly domesticated the Madrid Protocol, which can complicate the registration and enforcement of trademarks in those regions.

In some member countries, the response time to objections raised by the local IP office may be very short. This limited time frame can hinder your ability to consult with local trademark agents or respond adequately, leading to delays, it is recommended to developing a strategy to address such challenges in order to speed up and streamline your international trademark registration.

Accurately Select Trademark Classes

As with national registrations, it is crucial to select the correct trademark classes for registrations under the Madrid Protocol. The protocol does not allow for the filing of divisional applications, so if you receive an objection in one class, you cannot proceed to registration in other classes until the objection is resolved. Selecting appropriate trademark classes can help avoid potential opposition.


To expedite international trademark registration under the Madrid Protocol, meticulous adherence to procedures is crucial. Ensure your basic mark is robust to avoid risks impacting your international registration. Understand the trademark laws and potential opposition in designated countries, especially those with unique challenges like certain African jurisdictions. Accurately selecting trademark classes can prevent delays. Consulting with experienced trademark agents in the UAE, such as United Advocates, can streamline the process, ensuring compliance with regulations and prompt responses to objections. By following these guidelines, brand owners can efficiently secure international trademark protection across multiple jurisdictions.