Trademark registration in UAE and across the globe through the Madrid Protocol can be complex and a long drawn process. It’s possible for an application to take a year or more to get reviewed and for the trademark examiner to tell you whether or not your trademark can be registered. There are, fortunately, ways for you to hasten the process of trademark registration in UAE and globally. This is through the elimination of errors in the application and conducting a thorough trademark search to ensure that your mark is unique. Follow these steps for a successful trademark registration:
Step 1: Conduct a thorough trademark search.
A trademark search in UAE and internationally carried out by reputable intellectual property (IP) specialists allows you to enjoy the following:
- Avoid exposure from attorney’s fees and damages resulting from oppositions or claims by senior IP rights owners
- Prevent the spending of valuable resources on building common law rights and goodwill for a trademark you’re forced in dropping as there is already another party that has secured rights to the mark
- Avoid the adoption of a weak trademark which you won’t be able to protect from IP infringers or having a brand which requires substantial costs in achieving your desired levels of protection
- Provision of well-reasoned and logical clearance opinion from IP specialists which may support your defense against any claim of willful infringement or bad faith
- Knowledge that’s developed from a trademark search analysis and report can assist you in the drafting of a trademark application which minimizes the chances of the trademark office to refuse your registration and oppositions from third parties
- Trademark search results can help in the creation of marketing materials which minimize risk of issues and challenges by owner that have similar trademarks you’ve uncovered in a trademark search
- Help you discover the prohibited symbols and signs that should not be included in your trademark application
- Uncover all trademarks that are deemed either deceptively similar or identical for similar products and services
Step 2: File the application.
The trademark application has to include a description of products and services that you are currently using and intending to use with a mark. You also need to provide copies of the mark you plan on getting sufficient protection. As soon as the trademark application is filed through the Madrid System or Protocol, it will undergo formalities check in order to make sure that the requirements submitted are completed and they fulfill the trademark application conditions under relevant legislation. If there are problems that go unrectified, there’s a possibility that an application is rejected.
Take note: there are no refunds for trademark registration fees even when the application was rejected by the authorities.
Step 3: Wait for the examination.
As soon as your application is seen to in full compliance with formality requirements, IP examiners assigned to check your application will see if it’s acceptable on relative and absolute grounds. A set of reviews will be undertaken by IP examiners. Should they discover a problem under any ground established in UAE IP legislation and the Madrid Agreement, an official notice will be issued. The applicant can have the opportunity in responding to a refusal. If your application isn’t rejected on relative or absolute grounds, it passes.
In such case, it will have to be advertised in international trademark journals and UAE local newspapers where third parties can oppose on your trademark registration via opposition proceedings.
Step 4: Approval of the registration.
A notice of acceptance or approval for your trademark administration will be sent to your appointed representative. If there are oppositions, then it will be your responsibility in defending the mark. Cost of defending a challenge to your trademark registration application will depend on various factors, including conduct of interested party. Third parties have two months in opposing the registration of marks.
Step 5: Registration of the mark.
Following the period of submitting oppositions, your mark will be registered officially if an opposition has not been successful or there wasn’t any opposition filed against the application. Your trademark registration will come with a trademark certificate or certificate of registration issued on the date of being awarded IP rights. As soon as your trademark is registered, you will have legal rights to it that are enforceable.
A trademark registration in UAE can only provide protection within the country’s jurisdiction. If you also want to protect your brand overseas, then you’d have to register it for every country of interest. It’s in your best interests to seek the help of IP specialists such as FAR Consulting Middle East to make the trademark registration process a lot simpler. With a solid international experience, as well as a network of international associates, your brand can have protection throughout the globe. Talk to the experts today!