Madrid Protocol for UAE Brand Owners: How to Manage a Trademark Renewal?

The UAE joined the Madrid Protocol in September 2021, allowing the brand owners in the country to register their trademarks worldwide through a centralised system. Even though the UAE is in the nascent stage of the international trademark registration system, brand owners should understand the key procedures and requirements related to the registration and renewal of their trademarks. Trademark agents in the UAE can help brand owners to navigate the key challenges of the Madrid Protocol.

This article actively focuses on the procedures and requirements associated with trademark renewal under the Madrid Protocol. Getting to know the process will help the UAE brand owners effectively maintain their trademarks registered in global jurisdictions. Read ahead to gain further guidance on how to effectively manage a trademark renewal under the Madrid Protocol:

How Long is an International Trademark Registration Valid?

An international trademark registration, recorded in the International Register, will be valid for 10 years. The trademark owners can renew their international trademarks every ten years directly with the World Intellectual Property Organisation (WIPO) after paying the required renewal fees. Consult with trademark agents in the UAE for assistance in renewing an international trademark filed under the Madrid Protocol.

Renewal Date for the Designated Countries

All countries designated for your international trademark registration will have the same date of renewal. The date of renewal will be the date of the first instance of filing.

What Will Be the Renewal Date for Subsequent Designations?

The Madrid Protocol of international trademark registration allows the brand owners to add more countries at a later stage to their existing international registration. This process is called subsequent designations. A subsequent designation arises when the brand owners want to expand their business to new countries that are members of the Madrid Protocol or new countries join the Madrid Protocol and the brand owners have a business interest in these countries. However, the date of renewal of your international trademark registration will not change for subsequently designated countries. Trademark agents in the UAE can provide you with more information on subsequent designations under Madrid Protocol.

When to Renew an International Trademark Registration?

Generally, trademark owners can renew their international trademark registration three months before the expiry of the 10-year term of protection. In case you failed to renew the registration within that period, WIPO will give you a grace period of six months following the expiry of the registration. Brand owners can renew their international trademarks within this grace period allowed by the WIPO. However, you are required to pay a surcharge if you renew the trademark during this grace period.

How to Know if the International Trademark Registration Has Expired?

WIPO will send you a notice that confirms the date of expiry of your international registration. You can take the necessary actions based on the unofficial notification sent by the WIPO.

How to Renew an International Trademark Registration?

There are generally two ways to renew an international trademark registration. The first way (which is considered to be the simplest way) is to renew the international trademark registration online. The second method is to renew an international registration by submitting the form MM11 directly to the WIPO. Trademark agents in the UAE can advise you on the procedures for renewing an international trademark registration.

Examination of the Renewal Application

WIPO will examine your application for renewing the international trademark registration. The examination is only a formality but the organisation will notify you in case any problem is detected. The issues could be an error in the application or the failure to pay the required fee for renewing an international trademark registration.

Seek Advice from Trademark Agents in the UAE

Trademark agents in the UAE can advise the trademark owners on how to renew their international registrations under the Madrid Protocol. UAE brand owners need to take care of the date of expiry to promptly renew their international registrations. Failing to renew on time will lead to additional surcharges which should be avoided to reduce the cost burden. Jitendra Intellectual Property (JIP) is one of the leading IP firms in the UAE with expertise in executing Madrid Protocol applications.

JIP’s experienced trademark agents can help the UAE brand owners to navigate all the challenges of the Madrid Protocol by offering customised trademark solutions. Consult with us today to protect and manage your trademark under the Madrid Protocol without any hassle.

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