Introduction of joining UAE under the Madrid System:
Dubai is considered a contact point for brands and trademarks for expanding investment and protecting intellectual property for entrepreneurs. seek to inspire and grasp business entrepreneurs which are inspired to bring a business vision to our global market. For that UAE on September 28, 2021, has joined its agreement of accession to the Madrid Protocol with the WIPO representative. Now through being the 109th member of the Madrid System by the Director Generals Binying Wang and Hasan Kleib. which now covers 125 countries such as the USA, Australia, Japan, Russia, and China.
UAE is the third country in the Gulf Corporation Council behind Oman and Bahrain. The system provides simultaneous International protection on the territory of its members. WIPO assists worldwide companies, from large businesses to small and medium-sized businesses (SMEs), by offering top-notch international IP services to help safeguard corporate investments in innovation.
You are allowed to use the Madrid Union System of trademark registration if you are associated with a membership of it personally or professionally. This means that you shall be a citizen as well to get your primary residence in.
About Madrid Protocol:
The Madrid Union System, which supports trade in global markets that make up more than 80% of the worldwide market, is the only approach for international trademark registration. It was founded in 1891 and procedures according to the Madrid Agreement (1891), as well as the Madrid Protocol (1989). It is managed by the Geneva, Switzerland-based International Bureau of the Worldwide Intellectual Property Organization. In addition to the nations of the European Union (EU), the most of developed nations, and a large number of emerging and transitional economies, the system provides simultaneous International protection on the territory of its members.
International registration has several advantages for the owner of the trademark under WIPO
- Pay one fee with one language instead of filing separately in the trademark offices of the various contracting parties in different languages and paying separate fees in each Trademark Office.
- Never have to wait for wait for the Trademark Office of each Contracting Party whereby protection is desired in order to make the choice to register the mark. If there is no objection, the brand is protected in the relevant contracting party. After that, you’ll get a grant certification.
- The ability to change the personal information about international registration (Name, address, change partial or total 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.
- There is only one expiry date and one International registration to renewal.
- No need to investigate the compatible with the formal requirements. Or even classify the goods, services or publish the trademark.
Process of Madrid WIPO System:
The Process of registering in WIPO system in UAE as follow:
First Stage: Utilize your regional or national IP office to submit an application. You must first register with or submit an application to your “home” IP Office (office of origins) before you may submit an international application. Your worldwide application must then be submitted by this same IP Office, that will verify it and send it to WIPO.
Second Stage: Official assessment by WIPO Your international application is formally examined by WIPO. Your mark is entered into the International Registration and made public in the WIPO Gazette of International Trademarks once it has been approved. As specified in your international registration, WIPO will then provide you a certificate of your international registration and inform the IP Offices (office of origins) in all the countries where you intend to have the protection of your mark.
Third Stage: Substantive evaluation by selected national or regional offices the origins Offices of the regions in which you’ve registered for protection will examine your mark in accordance with their laws and determine if it can be protected in those countries between 12 or 18 months. Following the consolidation of the International Registration, WIPO will let you know of its judgments. If an IP Office decides not to fully or partly protect your international trademark, their choice will not have any bearing on other IP Offices’ choices. Additionally, you can address the relevant IP Office directly with your complaint. If an IP Office ultimately decides to issue you trademark protection, it will note the protection granted. Your mark’s international registration is legitimate for ten years.
We suggest hiring a knowledgeable UAE trademark agent that will assist you with the entire international trademark registration procedure and offer guidance if any issues arise.
Filling International Application Steps:
- Checking before filing an application — Before submitting an international application by the Madrid System, the applicant must conduct a check to see whether identical or related trademarks existed already (or are ongoing) in the relevant countries.
- Filling International application – The applicant should have previously applied or registered for a trademark in the “home” IP Office (office of origin) in order to submit an international application.
- Monitoring – Implying an email address on the international application form MM2 enrolls the applicant directly in the WIPO electronic alerts program. This means that all notifications and documentation pertaining to an international registration or application will be sent to the applicant through email. To sign up for electronic alerts, the applicant may also get in touch with WIPO at any time. Madrid Monitor gives real-time updates on the state of both your international registration at selected regional/national Offices and an international application being handled by WIPO.
- Managing – Beginning on December 28, 2021, foreign companies, brands, and trademark owners will be able to use the Madrid System’s pre-determined designation process to apply for trademark protection while selling goods and services in the UAE. By submitting a single international trademark application and spending a single set of fees, local brand holders in the UAE can use the Madrid System to protect the exploitation of their brands in the 124 countries of the other 108 members.
Item 1: Personal Information: Name, Number, Email, Nationality, legal nature, IP Office.
Item 2: Trademark information, including the following items: Trademark name, Trademark name translation in English and Arabic, Trademark type, Trademark class, mark description, class number, product explanation, and Selected list of Designation Countries.
Item 3: Entitlement to File:
To be entitled to use the Madrid System, you must first have a connection with one of its members (known as “Contracting Parties”). This connection will determine your office of origin (national/regional intellectual property office).
You must have the following in order to be eligible: a trademark logo, a copy of your business’ trademark registration, a passport copy, and a complete home address. Priority documents, if any, Power of Attorney (notarized by the Notary Public & legalized by the UAE), Through the Ministry of Economy Link of local registration, a mark may be registered or a trademark request for protection may be submitted in the United Arab Emirates.
International Trademark Renewal:
Your trademark’s international registration is valid for ten years. At the conclusion of every ten years, you can renew the registration immediately with WIPO with impact in the relevant Contracting Parties. 6 months before to the expiration of an international registration, WIPO will send its owner and agent a letter reminding them to renew.
From 3 months before an international registration expires till the end of the 6-month term period that follows, also you able to submit a proposal for its renewal online. As well as you can pay the associated fees using either your WIPO Current Account or a credit card.
You must fill the form MM11 through Contact Madrid in order to confirm your renewal for bank payment transfer. The relevant international registration code, the named Contracting Parties for which the renewal is needed, and the specifics of the payment shall all be mentioned in the request.
Find out more information on maintaining your international registration please visit bact.ae
International Application renewal Form:
The Form of MM11 consists of:
– The international registration number that needs to be renewed.
– The owner’s name, which shall match the name shown in the International Register.
– All Contracting Parties for whom a renewal request is made, includes, if the owner so chooses, Contracting Parties for which a partial or complete denial is noted in the International Register.
– The signature of the owner, a person authorized to act on their behalf, or the office by which the renewal request is made.
– Instructions to debit the needed fees from an account with the International Bureau or the fees being paid and the manner of payment (Fee Calculation Sheet).
Filling International Application Renewal Steps:
The simplest way to renew the International trademark registration its by applying online.
Step one: make a proposal online before the expiry date
Step two: Your proposal it will be pending till proceed within 3 months before the renewal due date
Step three: A renewal certificate will be issued to the holder.
Designated countries in Madrid Union:
There are now 112 members of the Madrid Union, representing 125 nations. And over 80% of global trade is represented by these members, with room for growth as membership increases.
Any of the selected nations may raise an opposition to your trademark; but, if they are successful, only the international registration in that region would be impacted.
You can be required to contribute to the opposing party’s expenditures if someone challenges your trademark and you withdraw or lose your challenge to the opposition.
Any costs involved are determined in accordance with the national offices’ laws in the specified nations.
In the event that your overseas application is rejected, you might want to see a specialist.
International Trademark service Time:
Estimated service delivery period is 12 to 18 months from the moment the specified nations receive the application.
Trademark protection certificate:
The International Bureau will register the trademark in the International Registration if the international application complies with all requirements needed.
The International Bureau will also provide a certificate of the international registration to the applicant and inform the Offices of the specified Contracting Parties, IP office, and IP office of the international registration or representative. Therefore, this does not imply that the trademark is immediately registered in each of the named nations. Each Contracting Party shall review the trademark in accordance with its own laws, as was previously stated.
The certificate of International trademark protection under the Madrid protocol and it will take 10 years till expiration date within 6 months as grace period
Status of International Trademark Application:
When you apply for international registration trademark at WIPO under Madrid Protocol and want to know your application statue, you must choose a highly qualified legal professional company such as (Bait Aljouda Consultation And Training)
For requests please send it via bact.ae
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
For requests please send it via bact.ae
Why do you need a Trademark Agent when applying for an International trademark from UAE?
Deal with our highly experienced consultants and attorneys to cover and manage all of your required paperwork and put you on the right path.
Protect your International Brand with WIPO through Our services that enables holders registered in the Ministry of Economy UAE to apply electronically and request the registration of an international trademark with WIPO by Madrid Protocol System. Once a single request and payment of a single set of fees, you can obtain our services from registration to protection in more than 125 States.
We cover all of your business protection brand needs (Business Identity Protection, Brand protection from using, Reputation Protection in The Market)
BACT is the top-class Dubai-based Trademark Agent and Business Setup Consultant in UAE with strong business networks in all GCC countries and Europe.
You will enjoy the following main benefits by registering your International trademark with us:
√ Trademark Search
√ Trademark Monitoring
√ Trademark Registration
√ Trademark International Registration
√ Trademark Renewal
√ Trademark Cancellation
√ Trademark Mortgage
√ Trademark Modification
√ Trademark Agent Change
√ Trademark Ownership Transition
√ Trademark Ownership Modification
√ Trademark Logo Modification
√ Trademark Products Modification
√ Trademark Objection & Grievance
√ Trademark Document Services
For more visit bact.ae