Jurisdiction Update: UAE
Stephen Jiew Senior Associate, Intellectual Property
This is a welcome development by UAE, which had consistently ranked as one of the most expensive countries to file for trademark protection. On September 28, 2021, the Government of the United Arab Emirates had agreed to deposit its instrument of accession to the Madrid Protocol with WIPO's Director General. Accordingly, UAE becomes the 109th state to join the Madrid system, which provides trademark protection for its member states across multiple jurisdictions. The Madrid Protocol (1989) will enter into force, with respect to the UAE, on 28 December, 2021. In doing so, UAE becomes the third country in the Gulf Cooperation Council (GCC) along with Bahrain and Oman to join the Madrid Protocol.
The Madrid Protocol is an international treaty, centrally administered by the International Bureau of the World Intellectual Property Organization (WIPO), which has the aim of facilitating the procurement and maintenance of trademark registrations.
Adopted in 1989, the system provides an efficient and cost effective method of achieving expanded international protection for a trademark that has already been applied for or registered in the applicant’s home country (the country of origin).
In a nutshell, the Madrid Protocol (1989) is a vehicle to obtain and maintain registration of trademarks in multiple jurisdictions through a single trademark office.
It enables brand owners to designate 109 member states, covering 124 territories (including UAE as of 28 December 2021) via one single procedure, using one language and paying only one set of fees leading to significant cost savings.
An application for an International Right (IR), must be based on an initial national application in one of the member countries; for example, a UAE trademark application or registration. The applicant must designate the territories of interest and each country designated in the application results in a trademark that exists in its own right, just as a national trademark application would.
For brand owners looking to register their valuable trademark rights in multiple international jurisdictions, the Madrid System is a powerful tool in its provision of an efficient and cost-effective route to protection
UAE's accession to the Madrid Protocol will enable local brand owners including corporates, SMEs and entrepreneurs to register their trade mark internationally by using the simple registration process of the Madrid Protocol. This will be a boon for local brand owners seeking to expand into international markets as they could now seek protection of their trademark in the System's other 108 members including major markets such as USA, China, Japan, and India through a single trademark application filed with the UAE IP Office and payment of a single set of official fees. The savings in costs and management time in registering their trademark in their market expansion into potentially 108 other member states will be beneficial.
For foreign companies filing trademarks internationally, they will be able to obtain protection for their marks by designating UAE in their Madrid Application along with other member countries from December 28, 2021. The UAE has been known to be a difficult country for foreign companies seeking trademark registrations in UAE on account of a number of expensive formality requirements. The adoption of the Madrid Protocol negates these requirements. Accordingly, businesses planning to gain a foothold in the UAE trademark system and markets should find it considerably easier and more cost effective to do so.
As with any system, there are considerations involved in determining whether this powerful mechanism is suitable for your requirements and brand ambitions. Navigating the Madrid System benefits from the assistance of seasoned trademark practitioners undertaking methodologies designed to achieve the most tailored fit for any particular brand owner after careful consideration of brand strategy and ambition including competitive mapping of rival trademarks in multiple jurisdictions.
A Madrid System trademark is particularly suited to a mark, which is consistent in use and presentation across jurisdictions. If your mark is used such that it has local variants according to local use customs and market nuances, then a national application may be necessary to protect the local variant of your trademark.
Do you have local competitors in some particular jurisdictions where your trademark rights may have been circumscribed due to a historical conflict? If so, then, you may need to tailor your IR application to avoid the local competitor’s trademark to the extent possible.
There is no set rule for designating the number of countries in an IR application so you need to decide how many countries you wish to be designated and it may well be that filing national applications may be more cost effective than an IR application. Applicants need to consider the need to acquire broad protection in critical markets versus the cost and efficiency benefits of the Madrid System.
The membership of the Madrid Protocol is constantly in flux and in the last five years, countries such as Canada, Brazil, Indonesia, Thailand, Pakistan, and Malaysia have joined so IR applications may need to be reviewed periodically to ascertain whether the new member countries should be added.
The Madrid System is not a panacea for international registration of trademarks. Rather, it is a powerful tool for securing trademark rights in multiple jurisdictions and should be used strategically as a multipronged program to obtain trademark rights globally bearing in mind that national applications may still be needed to comprehensively protect your mark especially in challenging jurisdictions.
For further information, please contact Stephen Jiew.
Published in June 2022
