International Trademark Registration

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Nice Classification

The Nice Classification (NCL) is an international classification of goods and services applied for the registration of trademarks. The countries party to the Nice Agreement constitute a Special Union within the framework of the Paris Union for the Protection of Industrial Property. They have adopted and apply the Nice Classification for the purposes of the registration of trademarks. Each of the countries party to the Nice Agreement is obliged to apply the Nice Classification in connection with the registration of marks. Usage of the Nice Classification is mandatory not only for the national registration of trademarks in countries party to the Nice Agreement, but also for the international registration of trademarks effected by the African Intellectual Property Organization (OAPI), the African Regional Intellectual Property Organization (ARIPO), the Benelux Office for Intellectual Property (BOIP), the European Union Intellectual Property Office (EUIPO) and the International Bureau of WIPO. The Nice Classification is also applied in a number of countries not party to the Nice Agreement.

Madrid – The International Trademark System

The Madrid System for the International Registration of Marks is governed by two treaties: the Madrid Agreement Concerning the International Registration of Marks, which dates from 1891, and the Protocol Relating to the Madrid Agreement, which was adopted in 1989, entered into force on December 1, 1995, and came into operation on April 1, 1996. Common Regulations under the Agreement and Protocol also came into force on that date. The Madrid System is administered by the International Bureau of the World Intellectual Property Organization (WIPO), which maintains the International Register and publishes the WIPO Gazette of International Marks.

Who May Use the Madrid System

An application for international registration (an “international application”) may be filed by a natural person or a legal entity which is connected through a real and effective industrial or commercial establishment, domicile or nationality with a member of the Madrid Union. Only those who have that connection may use the Madrid System. An international mark registered under the Madrid System can only be protected inside the Madrid Union.

How the Madrid System Works

1. Application through your National or Regional IP Office (Office of origin) – Before filing an international trademark application, you need to have already registered, or have filed an application, in your “home” IP office. The registration or application is known as the basic mark. Once you registered or have filed basic application, need to submit your international application through this same IP Office, which will certify and forward it to WIPO.

2. Formal examination by WIPO – WIPO examines your international application for formalities only. This means that it does not refuse or grant protection. It simply checks the information presented in your international application. Once approved, your mark is recorded in the International Register and published in the WIPO Gazette of International Marks. WIPO will then send you a certificate of your international registration and notify the IP Offices in all the territories where you wish to have your mark protected.

3. Substantive examination by National or Regional IP Offices (Office of the designated Contracting Party) – The Office of each designated Contracting Party conducts substantive examination of the mark that is the subject of applicant international registration, in the same way it examines national/regional applications and in accordance with its domestic laws. A decision on the scope of protection will be made within 12 months (or 18 months, for certain members) from the date WIPO notified the Office of its designation. WIPO will record the decisions of the IP Offices in the International Register and then notify you.

Steps Procedure - WIPO

1. Searching before filling application – Before filing an international application through the Madrid System, applicant should search to find out if identical or similar marks already exist (or are pending) in designated countries.

2. Filling application – In order to file an international application, applicant must have already registered or applied for a mark in “home” IP Office.

3. Monitoring – When submitting international application form MM2, indicating an email address automatically enrolls applicant to WIPO electronic notifications service. This means that applicant will receive all notices/documents concerning international application (or registration) via email. Applicant can also contact WIPO at any stage to sign up for electronic notifications. Madrid Monitor provides the status in real time of an international application being processed by WIPO and the status of your international registration in designated national/regional Offices.

4. Managing – With its pre-determinated designation process, foreign brands, businesses and trademark owners can, from December 28, 2021, seek trademark protection through the Madrid System when selling their products and services in the United Arab Emirates. Local brand owners in the United Arab Emirates are able to use the Madrid System to protect their trademarks in the 124 territories of the System’s other 108 members by filing a single international trademark application and paying a single set of fees.

Benefits Of Madrid System

International registration has several advantages for the owner of the mark. After registering the mark, or filing an application for registration,
with the Office of origin, applicant has only to file one trademark application, in one language, and pay one fee instead of filing separately in the Trademark Offices of the various Contracting Parties in different languages and paying a separate fees in each Trademark Office. Further, the holder does not have to wait for the Trademark Office of each Contracting Party in which protection is sought to take a positive decision to register the mark; if no refusal is notified by an Trademark Office within the applicable time limit, the mark is protected in the Contracting Party concerned. In some cases, the trademark applicant does not even have to wait the expiry of this time limit in order to know that the trademark is protected in a Contracting Party, since he may, before the expiry of the time limit, receive a statement and notification of grant of protection from the Trademark Office of that Contracting Party. A further important advantage is that changes subsequent to trademark registration, such as a change in the name or address of the trademark holder, or a change (total or partial) in the trademark ownership or a limitation of the list of goods and services may
be recorded with effect for several designated Contracting Parties through a single simple procedural step and the payment of a single fee. Besides, there is only one expiry date and only one trademark registration to renew. International trademark registration is also to the advantage of Trademark Offices. They do not need to examine for compliance with formal requirements, or classify the goods or services, or publish the trademarks.

Process Of International Registration From UAE (Madrid Protocol/WIPO)

This service enables holders registered in the Ministry of Economy UAE to apply electronically and request the registration of an international trademark by Madrid Protocol System. Once a single request and payment of a single set of fees, you can obtain the protection in more than 125 States. This system facilitates the modification of the wallet of the global trademark or its renewal or expansion through a single central system. Once the Ministry receives the trademark request electronically via the link, the Ministry endorsed the request and sends it to the WIPO directly to give it to the States to be registered therein.

We advise you to appoint the professional UAE Trademark agent who will guide you through all process of International Trademark registration and advice if any difficulties appear.

Service Procedure

1. Filling Application: Before you file, you must have registered or applied for a trademark in the United Arab Emirates, this registration or application (known as the “basic mark”) will be the basis of your international application under the Madrid System. If your office of origin is not listed, it is not a member of the Madrid Union. Therefore, the international protection of your mark can only be obtained by applying for its registration with the Industrial Property Office of each country or region in which you seek protection.

2. Study Application

3. Registration

Required Documents

1. Registrar requestor details: Registrar requester name, phone, email, nationality, legal nature, office of origin.

2. Trademark details: Trademark name, Trademark name translation English/Arabic, Trademark type, Trademark class, mark description, class number, product explanation, Selected list of designation countries.

3.Document attachments: Trademark logo, Trademark License copy if company/business , Passport Copy, complete home address, Power of Attorney (notarized by the Notary Public & legalized by the UAE), Priority documents if any, Registration Of A Mark Or Submission Of A Trademark Request For Protection in the United Arab Emirates via the Ministry of Economy Link of local registration.

Fees (in one class)

Trademark Service Current Official Fee
Basic fees where no reproduction of the mark is in color CHF 653.00
Fees of contracting parties CHF 18,774.00
Complementary fee CHF 4,400.00
Grand Total: CHF 23,827.00

Estimated Time For Service Delivery

Estimated time for service delivery is 12 to 18 months from the date of receiving the application by the designated countries.

Duration Of International Trademark Registration

An international registration is effective for 10 years. It may be renewed for further periods of 10 years on payment of the prescribed fees. The International Bureau sends an unofficial reminder to the holder and to his representative (if any) six months before renewal is due.

Effects Of The International Trademark Registration

From the date of the international registration (or, in the case of a Contracting Party designated subsequently, from the date of that designation), the protection of the mark in each of the designated Contracting Parties is the same as if the mark had been the subject of an application for registration filed direct with the Office of that Contracting Party. If no provisional refusal is notified to the International Bureau within the relevant time limit, or if any such refusal is subsequently withdrawn, the protection of the mark in each designated Contracting Party is the same as if it had been registered by the Office of that Contracting Party.

Dependence On The Basic Mark

For a period of five years from the date of its registration, an international registration remains dependent on the mark registered or applied for in the Office of origin. If, and to the extent that, the basic registration ceases to have effect, whether through cancellation following a decision of the Office of origin or a court, through voluntary cancellation or through non-renewal, within this five-year period, the international registration will no longer be protected. Similarly, where the international registration was based on an application in the Office of origin, it will be canceled if, and to the extent that, that application is refused or withdrawn within the five-year period, or if, and to the extent that, the registration resulting from that application ceases to have effect within that period.

Refusal Of International Trademark Protection

The international registration may be renewed in respect of all the designated Contracting Parties or in respect of only some of them. It may not however be renewed in respect of only some of the goods and services recorded in the International Register; if therefore the holder wishes, at the time of renewal, to remove some of the goods and services from the international registration, he must separately request cancellation in respect of those goods and services.

International Trademark Renewal

The Office of a designated Contracting Party examines the international registration in exactly the same way as an application filed directly. If grounds for objection are found during the ex officio examination, or if an opposition is filed, the Office has the right to declare that protection cannot be granted to the mark in that Contracting Party. Any provisional refusal must be notified to the International Bureau by the Office of the Contracting Party concerned within the time limit specified in the Agreement or Protocol. This standard time limit is 12 months. A Contracting Party may however declare that this time limit shall be replaced by 18 months. A Contracting Party that has made this declaration may further declare that a provisional refusal based on an opposition may be notified even after the expiry of this 18-month period.

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