Madrid Protocol: Avoid These Mistakes while Filing a Trademark Globally
As a business owner, you need to understand the importance of protecting your brand internationally. Fortunately, the UAE is now a party to the Madrid Protocol which means you can ensure trademark protection in more than 125 countries by submitting a single application. You only need to file the application in a single language and pay only a single set of fees.
However, many businesses commit certain basic mistakes and put their international trademark application at risk of rejection. Trademark agents in the UAE can help you apply for international trademark registration without any error. Here are the most common trademark mistakes you must avoid while filing a trademark globally under the Madrid Protocol:
File a National Application and Believe it will be Protected Everywhere
Most small businesses are unaware of the scope of trademark protection. Trademarks offer only territorial protection and you need to use the Madrid Protocol if you wish to get protection in multiple countries. This means if you conduct trademark registration in the UAE, your trademark will be protected in that country only. If you export your products abroad, you need to be worried about protecting your brand in the countries where you sell or planning to sell.
Some brand owners get their trademarks registered in their country of origin and sit complacent thinking that it will be automatically protected in other countries where they have a business interest. This grave mistake increases the risk of someone filing an identical or similar trademark in a foreign country. If you lack a registered mark, it will be difficult for you to defend your mark from counterfeiters as well. Trademark agents in the UAE can help you obtain trademark rights in multiple countries using the Madrid Protocol system.
Not Registering a Trademark in Countries with Higher Counterfeit Risk
Even though brand owners use their brand in foreign countries, many of them, especially SMEs, do not bother to register it. There are many risks involved, especially in countries where counterfeiting is high. Someone may see the success of your trademark and decides to take it. Sometimes a local distributor may warn you about the existence of a brand identical or similar to yours, registered by someone without your consent.
Other times, it can also happen that your agent or local distributor may file for a trademark application without obtaining your authorisation. It will be difficult for you to recover your brand and you may have to spend a lot to fight off the counterfeiter. Moreover, counterfeiters can damage the reputation of your brand due to the low-quality products they place on the market. While filing a Madrid Protocol application, you must give top priority to countries with higher levels of counterfeiting risks or countries with weaker anti-counterfeiting measures.
Underestimating the Importance of the Nice Classification
While filing for a trademark under the Madrid Protocol, you need to describe the goods or services your mark will distinguish in order to ensure adequate protection for your brand. This list of goods or services (Nice Classification List) defines the limits of the protection of your mark. The Nice Classification List contains 45 goods and services from which you have to select the right class for your mark. Listing your trademark against the wrong class may lead to brand confusion and it may be objected to. The wrong class may even affect the enforcement of your trademark. It is advisable to consult with trademark agents in the UAE if you are struggling with the selection of trademark classes.
Not Verifying the Existence of Earlier Marks
You need to carry out a trademark search to verify if there are earlier marks that are identical or similar to yours. Going ahead with the application without knowing there is a conflicting mark will attract opposition action from the owner of the previously registered mark. This may lead to a rejection or you may be caught up in lengthy trademark disputes. Carry out a trademark search through trademark agents in the UAE before filing your trademark application.
Hire the Best Trademark Agents in the UAE
Even though the benefits of the Madrid Protocol are numerous, you need to avoid certain common pitfalls to ensure you get proper trademark protection in all the countries designated. Consulting with the best trademark agents in the UAE such as Jitendra Intellectual Property (JIP) is the best way to avoid committing such mistakes.
JIP is one of the leading IP firms in Dubai with years of experience. We have helped out thousands of businesses to establish their brands across the UAE and other countries. JIP provides robust trademark services in Dubai such as trademark search, trademark watch and trademark renewals. Book a consultation with us to determine how to elevate your brand to the next level with adequate IP protection.