Qatar’s IP Revolution: Embracing the Madrid Protocol – What Lies Ahead?

On May 3, 2024, Qatar achieved a major milestone in its intellectual property journey, becoming the 115th country to join the Madrid System. his achievement was formally announced by the Qatari authorities on May 4, 2024, and later confirmed by the World Intellectual Property Organization (WIPO) on May 6, 2024. As the protocol took effect on August 3, 2024, Qatar entered a new era of enhanced trademark protection and streamlined processes, simplifying the registration process for Qatari businesses. This development underscores the vital role of local intellectual property agents in expertly navigating global frameworks, ensuring optimal protection and growth for businesses in Qatar.

Advantages of Qatar Joining the Madrid Protocol:

 

• Qatar’s accession to the Madrid Protocol is expected to bring several benefits. Firstly, it will significantly ease the process of trademark registration for Qatari companies looking to expand internationally, thereby promoting global trade and investment. It also positions Qatar as a more attractive destination for foreign investment, knowing that international trademarks can be protected more easily.
• The streamlined process will lead to greater efficiency and reduced costs in managing IP portfolios, which is particularly beneficial for startups and SMEs that may have previously found the costs of international trademark protection prohibitive.
• All conditions of the Madrid Protocol will apply, including the requirement of having a registration of the trademark in Qatar to submit an international registration application.
• However, the Qatari Trademark Law (No. 56 of 2023 adopting the GCC Trademark Law (Gulf Cooperation Council) and its implementing regulations) will still apply to any procedures related to the Qatari mark included in the IR application. As such, the same timeframes, procedures, and approaches will likely remain in force for these matters.

 

Key Provisions and Timeline for International Trademark Registrations in Qatar:

 

1-Notification Process for IR Applications:

• Qatari-Origin Applications:

 

• International Registration (IR) from Qatar: When a trademark application originates in Qatar, it is first filed and registered with the Qatari Trademarks Office (TMO). Once the trademark is registered domestically, the applicant can file an international application through the Madrid Protocol, designating other member countries where they seek protection.
• Notification: The World Intellectual Property Organization (WIPO) will handle notifications related to the international registration. Any updates, requests for further information, or office actions will be communicated by WIPO to the Qatari TMO, which in turn notifies the applicant. Nevertheless, the Qatari TMO communicates with WIPO regarding the status, updates, and any issues related to the international application originating from Qatar.

• Applications Including Qatar:
• Designating Qatar: If an international application includes Qatar as one of the designated countries, WIPO will notify the Qatari TMO about the application.
• Examination: The Qatari TMO will examine the application according to its national laws and procedures. If there are objections or additional requirements, the Qatari TMO will communicate this to WIPO, which will then notify the applicant.

 

2-Role of the Qatari TMO in IR Filings:

 

• For Qatari-Origin Applications: The Qatari TMO will ensure the national registration is in order before WIPO processes the international application.
• For Foreign-Origin Applications: When Qatar is designated in an international application, the Qatari TMO examines the application to ensure it complies with local trademark laws. If any issues arise, such as conflicting marks or additional information needed, the Qatari TMO will inform WIPO.
• Maintaining and Renewing Registrations: The Qatari TMO is responsible for maintaining the records of trademarks that are part of the Madrid system and ensuring they are renewed in accordance with both international and national regulations.

 

 

3-Key Procedures and Deadlines: Registration Timeline, Office Decision Response, Non-Use Period, Opposition Filing:

 

• Registration Timeline: The duration for obtaining the final registration certificate is up to 18 months. Meanwhile, the examination of international registration applications that include Qatar will take a maximum of 2 months from the date of submission.
• Respond to the Decision Issued by the Trademark Office: The deadline for responding to such decisions is 2 months from the notification date. While a power of attorney is not required to respond to the decision, the Qatari Trademarks Office requests a POA duly notarized and legalized up to the Qatari Consulate in the event of oppositions or appeals.

• Non-Use Period for International Trademarks in Qatar: The period of non-use is generally calculated from the date of national registration or from the date protection was granted in Qatar. However, if there is no rejection of the mark, the standard period of non-use before a trademark can be challenged for non-use is typically five years. This means that if the trademark is not used in commerce in Qatar for five consecutive years from the date of registration or grant of protection, it may be subject to cancellation. On the other hand, if a rejection of the mark is issued, the situation may be different. The non-use period would generally still be five years, but the period might be influenced by the outcome of any appeals or resolutions of the rejection. The non-use period is usually calculated from the date the trademark is officially registered and protected, even if there were initial rejections that were later overcome.
• Opposition Period: The opposition period against a registration request is 60 days from the date of publication in the Official Gazette.
• Applicable Nice Classification: Qatar continues to apply the 11th edition of the Nice Classification, ensuring alignment with international standards for trademark classification.

 

The Role of Local IP Agents:

Despite these advancements, the role of local IP agents in Qatar remains crucial and more relevant than ever. Here’s why:

• Even with simplified international filing procedures, the complexities of local and international trademark laws still require expert navigation. Local IP agents bring invaluable expertise in interpreting and applying these laws, ensuring that the trademark registrations are both effective and compliant.
• Local IP agents understand the unique business culture and legal nuances of Qatar. Their tailored advice can help businesses leverage their intellectual property effectively for growth and manage global trademark portfolios efficiently.
• IP rights enforcement is still governed by local laws. Hence, the role of local IP agents is crucial for managing disputes within Qatar, including representing businesses in local court proceedings or at the Qatari Trademarks Office.
• Local IP agents provide a level of service that remote filing services cannot match, from conducting thorough market searches to ensuring the success of trademark registration and use.

In summary, Qatar’s accession to the Madrid Protocol has transformed the trademark registration process, offering a centralized and streamlined approach that maintains the Qatari TMO as a vital point of contact for both domestic and international trademark filings. This development simplifies the management of international trademarks for Qatari businesses and those seeking protection in Qatar, positioning the country as an attractive destination for foreign investment. Furthermore, local businesses are poised to thrive in this new era of IP protection, where trademark registration and management have become more efficient and effective.

Written by our Legal Consultant: Ms. Lubna Qarmash