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Everything You Need to Know About Filing Trademarks under Madrid Protocol in the Middle East

Filing trademarks under Madrid Protocol in GCC

Conducting trademark registration in multiple jurisdictions is the best way to ensure your brand is reaching an internal customer base. However, many brand owners are unaware of the benefits of conducting international trademark registration using the Madrid Protocol. If your business is located in a country that is a party to the Madrid Protocol, you can file an international trademark registration in a single filing.

International trademark registration in the Middle East region is challenging as only a few countries have signed the Madrid Protocol such as Oman, Bahrain, Israel, Iran and Egypt. In this article, we talk about how brands in the Middle East should take the benefit of international trademark registration through Madrid Protocol. Consult with trademark agents in the Middle East to clear the air on international trademark registration. Read ahead.

Who can File Trademarks under Madrid Protocol? 

The Madrid Protocol which enables international trademark registration came to force in 1989 with which brand owners can file trademarks in multiple countries through a single application. The World Intellectual Property Organisation (WIPO) monitors the international trademark registrations has defined the eligible entities covered under the Madrid Protocol. As per WIPO, any entity can use the Madrid Protocol if it has a personal or business connection to any member country.

When do You Need to Use International Registration? 

International trademark registration is not an inevitable requirement. A brand can opt for trademark registration in several jurisdictions if it has businesses in those countries. If a brand’s customers are located only in Bahrain, they don’t need to opt for trademark registration as per Madrid Protocol. However, a Middle East brand that has customers all over the world can consider international trademark registration.

We are living in a time where e-commerce is gaining upper hand over traditional selling methods. The spread of coronavirus has increased the relevance of selling through online channels. If a brand sells online, or its trademarked products or services are available ( or viewable) internationally, then Madrid Protocol becomes a great idea. In short, if a Middle East company has business outside the region or in other Middle East countries that are non-members, it is better to conduct international trademark registration.

How Does the Madrid Protocol Work? 

The international trademark registration system or Madrid Protocol is administered by the WIPO located in Geneva, Switzerland. WIPO allows the filing of a single application by paying only one set of fees for protection in up to 124 countries. This is achieved by applying directly with the member country. The international mark registered with the member country is equivalent to an application or a registration of the same mark in countries the brands designate. When filed through The trademark office of the designated country must allow the protection of the trademark.

Madrid System Ensures Better Trademark Management  

Registering a trademark separately in multiple countries means, the brand owners are left with a huge trademark portfolio to manage. The trademark owners would struggle when it comes to renewals, trademark assignments etc. It requires a lot of resources to manage the trademark registrations in each country.

However, the Madrid system simplifies the management of the trademarks, as the brand owners can record changes or renewals of the registration directly. They don’t need to make changes in each country of registration separately. The brand owners get the opportunity to designate registrations in additional countries through the Madrid System. Consult with Trademark agents in the Middle East region to easily register brands through the Madrid System.

Cost Considerations of International Trademark Registration  

The cost of an international trademark registration includes the basic fee, plus extra costs depending on the jurisdictions where the brand owners seek to protect their trademark and the number of classes of goods and services that are covered under the registration. WIPO states that an additional fee will apply if brand owners want to expand the geographical scope of coverage, modify or renew the trademark portfolio after obtaining the international registration. In short, Madrid Protocol provides the brand owners with the most cost-effective way to register a trademark in several countries.

The UAE Joining Madrid Protocol

The UAE has recently approved a decision to join the Madrid Protocol of International trademark registration system. The joining is likely to come into effect by the end of 2021 or early 2022. The joining has been discussed for many years and was approved after considering the pros and cons of the Madrid Protocol of International trademark registration system. Consult with trademark agents in the UAE to know further about filing trademarks under the Madrid system.

How can Trademark Agents in the Middle East Assist You? 

Whether the brands’ owners are opting for trademark registration in the Middle East or internationally, the guidance of trademark agents is recommended. Trademark agents in Middle East such as Jitendra Intellectual Property (JIP) will assure all details are attended to and a smooth path is laid for trademark management. JIP provides international trademark registration services in Middle East countries such as Egypt, Oman, Bahrain and Israel. Consult with JIP for a faster and affordable international trademark registration.

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