Researched by: Zainab Rhyman-Adam
The UAE became a member of the Madrid Protocol (MP) on 28 December 2021. This accession is of significant importance to those wishing to protect their Trade Mark rights in the Middle East, and a considerable advancement for the UAE in consolidating IP practice. The MP (International Registration) system allows companies and individuals to seek Trade Mark protection in up to 125 member territories through filing a single application.
Prior to the accession, the only route to filing a Trade Mark Application in the UAE would have been via a direct national Application, at a high cost and with strict requirements for legalised supporting documentation being provided. Madrid applications can provide an average saving of 25 – 40% of the costs of filing national direct Applications; this combined with the option of designating many territories under a single application, filed at the Applicant’s national office with a single payment, provides cost effective, streamlined management. Benefits also extend post-registration, with a centralised 10-year post-filing renewal system as well as the opportunity to ‘add’ territories to the Registration at a later date.
It must be said that the system is not without its shortcomings. If objections are encountered during the examination of the Application in any designated territory, the cost benefits can be quickly eroded by the need to appoint a local agent. Similarly, alongside WIPO’s (World Intellectual Property Organisation) centralised maintenance system, designated territories may also have individual maintenance requirements, and these must be adhered to.
Regardless, the addition of the MP system to UAE’s IP infrastructure marks an important move towards the country’s new economic model – one based on the value of knowledge. The global nature of the MP system encourages business and individuals to expand their economic and intellectual horizons in a way which was previously inaccessible to most, both within and outside of the UAE. This will add significant value to a country encouraging invention and innovation, as with invention and innovation comes the need to protect the intellectual property that is created as a result.
With the addition of UAE as a contracting party to the MP system, and the increased likelihood that individuals and businesses will seek to protect their Trade Marks in this territory, the local requirements for registration should be considered. It is key to note that a registered Trade Mark in English characters will not necessarily provide protection against the registration of an identical or similar Trade Mark in Arabic characters. This could be of particular significance in this territory as branding of products and businesses is usually two-fold linguistically – in both English and Arabic. Another important consideration is the religious backdrop of the country. Being an Islamic country, it is often the case that branding may need to be adapted to align with local cultural norms and sensitivities. For example, Trade Mark protection cannot be sought for pork products, gambling services or alcohol.
In conclusion, with the MP system now providing a more cost effective and accessible option for businesses and individuals seeking to protect and broaden their Trade Mark rights to the UAE, it is timely to consider Trade Mark registration in this territory.
If you have any trade mark queries, please contact us via email, by telephone: +44 (0) 1242 691 801, or using the form below and we will be happy to advise and guide you.
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