How to Register a Trademark Internationally

A single international trademark registration application may be made when a UAE trademark owner wants to acquire trademark protection in a different country or throughout the planet. This is through the Madrid Protocol that’s administered by IB or International Bureau of World Intellectual Property (IP) Organization. It’s a much simpler and less costly way to get trademark and IP rights for your brand without having to apply to each country directly. Here are steps to successfully register your trademark internationally:

Step 1: File a trademark application in UAE first

If you don’t have trademark rights in UAE yet, you are to being the process of international trademark registration through filing an application in UAE. As soon as you’ve filed an application in UAE, you can then start the filing for international registration. Submitting an application in UAE first is great as this will allow you to obtain international registration prior to using the mark in commerce abroad.

With trademark registration through the Madrid System or Protocol, a trademark has to be used in commerce within the country where the mark will be registered unless it has been put under registration in a different country. When you file for trademark registration in UAE with the help of intellectual property (IP) specialists, the International Bureau will allow your application to move forward with the registration process on grounds that you’ve already made a foreign registration.

Step 2: Engage with an IP and trademark specialist

An individual or business is considered as foreign if its main place of business or permeant legal residency is in a different country as to where it will register a trademark. While it is possible to submit the basic application for international trademark registration yourself, it is likely that you won’t be able to effectively respond to all Office Actions that are issued by the International Bureau without the aid and guidance of trademark specialists.

Aside by being a requirement of the Madrid agreement, working with professionals will also be beneficial for you. Even when you already know the process of trademark registration in UAE, registering a trademark internationally is an even more detailed legal process. A team of IP professionals working for your best interests can conduct a trademark research, as well as ensure that changes to your trademark are made as necessary. The application is also guaranteed to be completed accurately. Most IP specialists respond to Office Actions that are non-substantive on your behalf. This can save you a lot of your valuable time and energy when you’re working on expanding your business outside of UAE.

Step 3: Perform a trademark search internationally

The International Bureau won’t approve registration applications for marks that are similar or identical to ones that are already in UAE. It is, therefore, necessary to conduct a trademark search prior to registering a mark to make sure that no one is using a mark that’s confusingly similar to yours. Should you find a mark that’s similar or identical to yours and it’s in use, then you can discuss with your chosen IP professionals to make changes to your mark prior to the filing. It’s very upsetting to learn that a mark already exists and you won’t be able to push through with your registration. Fortunately, there are ways to go around this, so it’s best that you consult with IP specialists in UAE.

Take note: DIY or Do-It-Yourself trademark searches online won’t be enough as they can only produce exact matches to your trademark. Majority of trademark disputes don’t arise from identical matches. They arise from marks that can cause a high probability of confusion amongst the consumers. Unlike basic trademark searches, IP professionals carrying out comprehensive investigations for you will not only uncover the identical marks but also similar matches.

Step 4: File the trademark application

Like in the UAE, other countries are ‘first-to-use’ jurisdictions. What this means is that there are trademark protections made available through the simple use of marks in the marketplace. Basic trademark protections, unfortunately, are limited and challenging when you enforce them. To have the luxury and presumption of worldwide validity and strong legal arguments during infringement cases, it’s best that you register a mark internationally.

When you file for your international trademark application, you also have to pay the basic fee of 653 Swiss francs. If a mark that you are trying to register is in color, then the fee will be 903 Swiss francs. There are additional costs and requirements you need to secure, depending on where the mark will be protected and the number of classes of products and services your registration will cover.

 

To make sure that you go about the international trademark registration process correctly, only hire reputable IP specialists such as Farahat & Co. Consult with the experts today!

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