Madrid Protocol and the Critical Role of Trademark Agents

The UAE became the 109th member of the Madrid Protocol on September 28, 2021, making international trademark protection easier for brand owners. The Madrid Protocol facilitates trademark protection in more than 120 member countries through a single filing, a single language and a single set of fees. Furthermore, you don’t need to appoint a local representative or trademark agent in each of the Designated Contracting Parties in which you seek trademark protection.

However, it doesn’t mean you don’t require to appoint a trademark agent at all. You are required to appoint a single local representative who is essential to manage the progress of your international trademark application at various stages of its progress. It means you need to have a clear understanding of the role of trademark agents in the UAE in facilitating international trademark registration under the Madrid Protocol. Read ahead to know further.

Key Responsibility of Trademark Agents in the UAE 

Trademark agents play a key role in facilitating international trademark registration through Madrid Protocol. Their responsibility begins from the pre-application stage to the post-registration phase. Some of the major responsibilities are detailed below:

Pre-application Advice 

Before proceeding with a Madrid Application, you must ensure that international trademark protection is right for your branding requirements. The Madrid System of trademark registration is ideal for brands with a global presence or businesses planning to expand into multiple jurisdictions. If this doesn’t apply to your brand requirements, it is better to go for local trademark registration.

Moreover, the time taken for trademark registration under the Madrid system is longer than that in the local trademark registration. It would take at least 18 months for a Designated Contracting Party to issue a trademark registration under the Madrid System. If such a long timeframe is not ideal for your brand, it is recommended to go for the regional trademark registration process. Trademark agents in the UAE can analyse your brand requirements and advise on which route to go.

Pre-application Trademark Search 

Conducting a trademark search is advisable to avoid any kind of trademark opposition. A trademark search is essential for both your home country application as well as the International ones. Any interested party can object to your trademarks if your proposed mark bear similarity to existing trademarks. Trademark agents in the UAE can browse through the official database of the local trademark office as well as the global brand database of the World Intellectual Property Organisation (WIPO) to see if any similar trademarks exist. In this way, you can avoid potential delays or rejection of your trademark application.

Help with Registration Procedure 

The process of trademark registration under the Madrid Protocol starts with filing an application for a basic trademark in the home country. Foreign brand owners are mandatorily required to appoint a trademark agent to register trademarks in the UAE. After the search is done, trademark agents in the UAE can help you prepare and submit the application along with the required documents.

Assistance for Opposition Procedures 

Trademark agents can provide legal advice to you on overcoming Notification of Provisional Refusals. They can also help you to file a response against the Notification of Provisional Refusals. Finally, trademark agents can assist you to execute the procedure in case of an Opposition.

Communicate with WIPO 

You can appoint trademark agents as your representative to manage your international registration before WIPO. A duly appointed trademark agent can sign communications and carry out any other procedural steps on your behalf. Moreover, the WIPO will send all communications directly to the trademark agent representing you.

Requirements to Appoint a Trademark Agent 

The Madrid System does not have any specific requirements concerning the professional qualifications, nationality, residence or domicile of appointed representatives. Therefore, there is no official list of representatives qualified to represent you before WIPO. You can either appoint an individual or a company as your representative. However, you are allowed to be represented by one person or company at a time.

Hire the Best Trademark Agents in Dubai, UAE 

Registering a trademark as per the Madrid Protocol is a complex process that requires the assistance of experienced trademark agents in the UAE such as Jitendra Intellectual Property (JIP). Appointing a trademark agent in the UAE as your local representative is essential to apply for your trademark registration as well as handle the opposition proceedings. JIP has highly qualified agents who can handle the Madrid Protocol proceedings with finesse.

JIP can simplify the process of both the national and Madrid systems of trademark registration. Our bespoke trademark services in the UAE include trademark search, trademark watch services, trademark renewal, trademark registration under Madrid Protocol etc. We can advise you on the selection of appropriate trademark classes and file them properly with the UAE Trademark Office.

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