Brand Owners Must Know Key Differences Between National V/s International Registration

Brand owners in the UAE are facing a new situation regarding their valued brands: ‘whether or not to go for an international trademark registration under the Madrid Protocol’. The Madrid System of international trademark registration administered by the World Intellectual Property Organisation (WIP), provides a centralised and cost-effective system for the brand owners. However, the UAE brand owners need to differentiate between the National Application and International Application (or International Registration)  before proceeding further.

Trademark agents in Dubai can provide you with effective advice on the procedures of the Madrid Protocol. In the meantime, read the key differences between the National Application and WIPO application:

1. Eligibility for Trademark Registration 

As per the rules of trademark registration in the UAE, a national application can be filed by any company or individual. Both foreign and local applicants are eligible to move a National Trademark Application to the UAE Trademark Office.

However, the eligibility standard is different in the case of filing an International Registration from the UAE Trademark Office. Only companies based in the UAE (any of the seven emirates) are eligible to file an application to the WIPO from the UAE Trademark Office. Trademark agents in Dubai can assist you in determining your eligibility for filing a trademark application.

2. Timeframe for Trademark Registration 

‘How long does it take to register a trademark in the UAE’ is a pertinent question frequently asked by brand owners. The time taken to register a National Trademark in the UAE is different from the time taken to register an international trademark through the Madrid Protocol system. In case of a National Application, the trademark will be granted within three months.

Sometimes it may take up to one year, depending on the special circumstances. The timeframe for the grant of a trademark as per the WIPO is 12 to 18 months. The trademark will be assumed as registered if the IP office of a designated member country fails to respond within the deadline.

3. Single V/s Multi-class Application

Brand owners applying for trademark registration in any jurisdiction must file them under relevant classes of goods and services as per the NICE Classification of Trademarks. They are also required to file the trademarks under multiple classes of goods and services. While some jurisdictions allow the applicants to file their trademarks under multiple classes in a single filing (Multi-class filing), the UAE wants the applicants to file separate applications for each class of goods or services.

The applicants need to file an additional fee for filing under each class for the National Application in the UAE. For International Registrations under WIPO, the applicants can file a trademark under multiple classes through a single application. The cost for each country will be the same. Trademark agents in Dubai can guide you on the NICE Classification filings.

4. Documents for Trademark Application 

To file a National Application for trademark registration in the UAE, the applicants are required to submit a Power of Attorney (PoA) duly Notarized and Legalized by the UAE Consulate. However, for an International Application, the PoA can be submitted simply signed by the applicant.

5. Jurisdiction of Trademark Opposition

The process of National trademark registration in the UAE is fairly quick as the application will be examined only by the Ministry of Economy. The situation is almost the same if you file a National Application in any designated country. It means the chances of rejection is fewer as far as National Application for trademark registration is concerned.

If you file an international trademark application, it will be examined by the WIPO as well as the IP offices of the designated member countries. The chances are high that you may face rejection or opposition from all over the world. A UAE applicant wishing to file an International Application with the WIPO is required to first file an application with the UAE trademark Office before proceeding with the International application.

6. Cost of Trademark Registration

The cost of trademark registration in the UAE (National Application) is higher in terms of the mandatory government fee charged. The cost of international trademark registration is less compared to the National Application.

7. Terms of Payment

The money for National Application can be paid in instalments in some jurisdictions. Chances for a refund are high in case your application gets rejected. On the contrary, you have to pay a 100% fee at one time to file a WIPO application. Moreover, WIPO will not refund the official fee for filing an international trademark application in case of rejection. Always rely on trademark agents in the UAE to pay the official fee for trademark applications.

8. Classifying Goods and Services 

Under National Application, you can identify the goods and services as per the NICE International Classification List. For example, brand owners dealing with clothing businesses can register a trademark under Class 25 in the UAE.

Under the WIPO application, you are required to specify the goods in the application. For example, if you are dealing with a T-shirt business, the trademark will be registered under Class 25. However, you are required to specify the particulars of the goods. You can only use the selected goods as per the International Classification of goods/services.

9. Requirement of Trademark Agents

In most countries, including in the UAE, only a local trademark agent can file the National Application. In WIPO, any person can apply for trademark registration. However, it is mandatory to hire a local agent to attend proceedings such as Appeal, Hearing and Opposition.

10. Trademark Search Database

You need to pay a government fee to conduct a trademark search in the UAE for a National Application. On the other hand, WIPO provides a trademark search report free of charge. Conducting a trademark search before filing an application helps you to make sure you are not infringing already registered trademarks.

11. Applicability of Laws (Rejection/Opposition/Hearing)

In case of a National Application, you need to follow the Local Trademark Laws. While filing an International Application for trademark registration, you need to follow the laws of the respective designated member countries.

12. Risk of Central Attack

When a National Application receives an opposition, it will be effective only in the country where the trademark is being opposed. It will not be linked to the National Applications of other countries. In WIPO, if the locally registered trademark stands rejected then all the applications filed through WIPO will also be rejected. In WIPO, the Opponent will always try to file the opposition depending upon the locally registered trademark.

13. Time Frame for Responding to the Rejection/Opposition

While filing a National Trademark Application, the Trademark Office will give you reasonable time to respond in cases of filing an Appeal or Counterstatement. While filing an International Application with WIPO, some countries will provide only two weeks to file the Official Response as per the Laws of the respective Country.

14. Trademark Portfolio

National Trademark Offices do not offer any Portfolio of Trademarks. However, WIPO offers Trademark Portfolio and Database facility to its customers.

Seek Help from Jitendra Intellectual Property 

The UAE has joined the Madrid Protocol of International Trademark Registration on December 28, 2021. Even though it provides a centralised system of international trademark registration, local brand owners are advised to perform adequate research before filing applications. You should be aware of the key differences between the WIPO applications and the National Application for trademark registration in the UAE.

Since the Madrid System is still in a nascent stage in the country, local brand owners need to consult with trademark agents in Dubai such as Jitendra Intellectual Property (JIP) before making any decision. JIP has a team of highly qualified trademark experts who can advise you on every nuance of international trademark registration. Hire JIP’s trademark registration services in Dubai, UAE to file an international application accurately.

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