Madrid Protocol in the UAE and Singapore

Both the United Arab Emirates and Singapore are members of the Madrid Protocol, so a brand based in either country can file at home once and then extend that filing to other member countries through a single international application. This guide explains how that works from each side, where a local agent still becomes necessary, and when a direct national filing is the better call.

What Madrid membership actually gives you

The Madrid Protocol is an administrative route, not a global trademark. It gives you one application, filed in one language, paid in one currency, that produces an international registration at WIPO. From that registration you designate the member countries you want protection in, and each designated office then examines your mark under its own national law.

Singapore is a long-standing member. The UAE is a more recent member, which is why a lot of UAE brand owners are only now looking at the route. Check the current member list on WIPO before you rely on a designation.

The advantages are administrative and they are real at portfolio scale:

• One filing instead of one per country, with one set of paperwork.
• One renewal date for the whole international registration, every ten years.
• Changes of owner name, address or ownership recorded once at WIPO rather than country by country.
• New markets added later by subsequent designation, using the same registration.

What it does not give you is a lighter examination. Every designated office still applies its own rules on distinctiveness, classification and conflicts with earlier marks.

Step one: your office of origin and your base mark

You can only use Madrid through an office where you have a genuine connection: nationality, domicile, or a real and effective industrial or commercial establishment. For a UAE company that office is the Ministry of Economy. For a Singapore company it is IPOS.

You also need a base mark at that office, either a pending application or a granted registration. The international application has to match it. Same owner, same mark, and a list of goods and services that is the same as the base list or narrower. You can never go broader through Madrid than you went at home.

That makes the home filing the most important drafting decision in the whole exercise. A base specification written too narrowly caps every country you later designate. Written too broadly, it invites refusals in the stricter examining offices downstream and can weaken the base itself. Get the base list right before you send anything to WIPO. Our guides on filing under UAE Law 36 of 2021 and on using Singapore as an ASEAN base go into what each office expects at that stage.

Step two: the international application and WIPO's review

The international application goes to WIPO through your office of origin, which certifies that it matches the base mark. WIPO then reviews it on formal grounds only: classification, the mark's representation, the applicant details, and whether the fees have been paid. If something is wrong, WIPO issues an irregularity notice with a deadline to fix it.

Fees have three parts: a basic fee, supplementary fees where you go beyond the included classes, and a fee for each country you designate. Designation fees vary a lot between countries because many members set their own individual fee instead of the standard complementary fee. WIPO publishes a fee calculator that gives you the exact figure for a given combination of countries and classes, so price your list there before you commit to it.

Once WIPO is satisfied, the mark is recorded in the International Register and published in the Gazette, and each designated office is notified.

Step three: national examination and provisional refusals

This is the part people underestimate. A designated office can refuse your mark, in whole or in part, for any reason it could have refused a direct national application: descriptiveness, a conflicting earlier mark, an unacceptable specification, or an absolute ground under local law.

The office notifies WIPO, WIPO forwards the notice to you, and the clock starts. Under the Protocol a designated office has twelve months to issue a provisional refusal, or eighteen months where that country has declared the longer period, and many have. Check the current declaration for each office you designate before you diarize anything, because the deadline for your response is set by that country's national rules and not by WIPO.

Responding is a national procedure. In practice that means:

• You answer under the designated country's law, in that country's format and language.
• Most offices require a locally admitted agent with a local address for service before they will accept a response. So Madrid saves you an agent at filing, then puts one back in the moment there is an objection.
• Missing the response deadline usually means the designation is refused in that country, even though the international registration itself survives everywhere else.

Budget for this. A clean designation costs you nothing after filing. A refused one costs a local agent and a substantive response, and refusals are common in the offices with strict specification practice.

Step four: the five year dependency

For five years from the date of the international registration, your registration depends on the base mark. If the base application is refused, withdrawn or cancelled in that period, the international registration falls with it for the affected goods and services in every designated country. This is often called central attack.

There is a remedy. Within three months you can transform the affected designations into national applications in each country, keeping the original date. It works, but it is expensive, because you are then paying national filing fees and local agents in every market at once.

The practical response is to make sure your base mark is solid before you build on it. If your home application is likely to draw an objection, it can be worth waiting for it to register before filing internationally.

Madrid or a direct national filing?

Madrid is the better route when you want several countries at once, when your specification is straightforward, and when central administration of renewals and ownership changes matters to you.

A direct national filing is often better when:

• You only want one or two countries, where the savings largely disappear.
• The target country has strict or unusual specification practice and you want the wording drafted locally from the start rather than defended after a refusal.
• Your home base mark is shaky, and you would rather not expose a portfolio to the dependency period.
• You need speed in one particular market and local prosecution is faster than the Madrid notification cycle.

Most portfolios end up mixed: Madrid for the broad sweep, direct filings for the two or three markets that matter most or examine hardest.

If the United States is on your list

The US is a designation many UAE and Singapore filers want, and it has its own rules whichever route you take.

An applicant whose domicile is outside the United States must be represented by a US-licensed attorney at the USPTO. That applies to a Madrid designation of the US exactly as it applies to a direct filing. A GTC US-licensed attorney acts as counsel of record for our clients, so that requirement is covered.

The US also requires evidence of actual use in US commerce before the registration is maintained, and a declaration of use between the fifth and sixth years after registration. The office fee for that maintenance filing is $325 per class. If you decide to file directly at the USPTO rather than designate it, the office filing fee is $350 per class for the single base application. Our US trademark page covers that route, and pricing sets out our fees for both.

Where to start

Get the base mark right, price the designation list on WIPO's calculator before you shortlist countries, and set aside a working budget for provisional refusals in the two or three markets most likely to raise one. If you want the base filing, the international application and the refusal responses handled as one piece of work, that is what our Madrid Protocol filing service does.

Sources

• WIPO, Madrid System for the International Registration of Marks
• WIPO, Madrid System fees and fee calculator
• USPTO, Madrid Protocol