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UAE Deposits its Instrument of Accession to Madrid System with WIPO

Published on : 14 Jan 2022

UAE's Accession to Madrid System in December 2021: Understanding the implications

The Government of the United Arab Emirates has declared its move to join the Madrid Protocol System, which will come into force on the 28th of December 2021. The move indicates the UAE becoming the 109th country globally and the third country in the Gulf Cooperation Council (GCC) to be a signatory to the Madrid Union. This will imply that as of the 28th of December, 2021, UAE will be accessible to trademark holders to attain trademark protection through international trademark registration. This development in the UAE trademark law and the practice of the same has been highly anticipated and desired among companies.

The Madrid System or the Madrid Protocol bestows trademark protection to its member countries across various jurisdictions. This System enables a single application by the Member State for trademark registration through WIPO in Geneva, Switzerland, for trademark protection in all member states.  The facility provided by the System creating trademark protection too many nations through single international trademark registration is beautiful to businesses of various countries. Thus, this development is a very positive step for companies and individuals within the UAE.

The Madrid System is an International Trademark System operated under the International Bureau of WIPO. The Madrid system aims to cover the facilitation in the acquirement and maintenance of trademark registration for a total of 125 countries (including the European Union member States, as well as the three countries of Benelux) by way of a single international application for trademark registration with any IP office of a member of the Madrid Protocol, be it national or in the region. The System came into effect in 1989; namely, the Protocol Relating to the Madrid Agreement following the multilateral treaty of Madrid Agreement Concerning the International Registration of Marks, 1891.

The implications of this new signatory with the Madrid System are manifold. The latest development would enable multiple benefits in trademark protection for the national level trademark right holders within the UAE and those internationally. They are seeking to attain trademark protection within the UAE. However, it should be clarified that a few aspects of the acquisition in this area in the UAE are still quite uncertain and are expected to be addressed and explained before the official linkage of the UAE with the Madrid System. The areas in need of clarity on the UAE's standpoint would include the fees payable for the same, whether the designations of the UAE filed via the Madrid System would hereafter be conducted as a single filing or multi-class filings, and whether local registration certificates could be attained in the country on the protection of UAE designations. There has been verification on the adoption of the 18-month notification period by the UAE to notify and alert the WIPO on rejections of registrations and confirmation by the Government that the UAE will receive individual fees for its designations. However, as mentioned, the amount of fees for the same is still uncertain and will be duly notified by the Government.

The country's adjunction to the Madrid System will enable companies and businesses within the UAE and internationally to apply for the international trademark protection comprehensively inclusive of all member nations to attain such registration by way of the World Intellectual Property Organization (WIPO) based in Geneva, Switzerland, discarding the need to apply for registration in national trademarks of specific nations or the need for payment of local agents' fees to attain the same. It can be said that the Madrid System provides trademark holders within its member States a 'one-stop shop' solution to achieve and secure trademark protection in multiple markets of the various nations comprising of it.

The application process and filing for registration under the Madrid System are economical and cost-efficient in various realms for trademark holders. Trademark Holders will be able to file a single application to attain trademark protection in multiple countries in a single language and pay the relevant fees in a single time instead of paying multiple fees to acquire multiple trademark protection in various countries interested. With the help of the Madrid System, Brand owners or trademark holders can oversee and manage their brand portfolio centrally and ease their development by expanding in various markets in the international area through the attainment of simultaneous trademark protections in the same. It further removes the different burdens in terms of administration and other complications in attaining registration of applications of the specific countries and will be highly beneficial to international rights holders. Managing portfolios with designations in the UAE will also potentially be more cost-effective due to the conditions requiring legalized powers of attorney concerning the filing of national applications and the legitimate legalized documents necessary for making various changes, including name, address, assignments, etc. Thus, simultaneous cost-effectiveness in managing portfolios can be anticipated.

Before this decision, it was strenuous to attain or apply for international trademarks in the United Arab Emirates, as some multiple costly protocols and formalities were needed to be done by companies before the filing for the same. The UAE's decision to be a signatory and join the Madrid System will enable companies to eliminate these conditions and necessities, thus allowing the trouble-free, cheaper mechanism to attain entry into UAE's trademark system. Further, the UAE is also extensively encouraging start-ups and small and medium enterprises (SME) to be brought up. This will enable these start-ups and SMEs to avail cost-effective means to protect and secure their brands in other member countries of the Madrid Protocol, which will further help them expand their businesses in new markets. Even those international rights owners and brand owners will have the alternative to file for trademark protection through a UAE designation rather than a national filing. Although some areas for international rights holders need to clarify, it can be better cost-effective in terms of registrations.

The UAE is the third country following Oman and Bahrain from the GCC to adjoin forces with the Madrid System. This implicates the three MENA countries officially being a part of the Protocol. Over the last five years, the countries, which have newly formally joined the Madrid Protocol, include Pakistan, Trinidad and Tobago, Malaysia, Canada, Brazil, Samoa, Malawi, Indonesia, Afghanistan, Brunei Darussalam, and Thailand. It is essential for businesses that focus their channelization and expansion in various countries or those that aim to enter multiple new markets to ensure that the business interests are protected and secured within those specific nations.

The new development by way of transferring the accession into the UAE trademark system to the Madrid system signifies the Government's various reforms to advance further and enhance the Intellectual Property (IP) laws within the country. This new step will improve the UAE's advancement towards a knowledge economy by further strengthening the IP framework within the country. The move was much anticipated to take place. It will create significant enhancement for those businesses and rights holders based in the UAE and those who have an interest in attaining trademark protection within the country. The WIPO has further announced that other countries from the GCC, like Saudi Arabia, are expected to form signatories and join the Madrid System soon. This is truly a move worth celebrating for the further development of the trademarks and IP sector of the UAE.



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