UAE’s Accession to the Madrid Protocol

A trademark can be any word, phrase, symbol, design or a combination of these factors that identifies an organization’s goods or services. The trademark exclusively identifies a particular product and adjoins the recognition to a particular brand or company. A trademark simply differentiates one company from the other.

Trademark registration is a process of ensuring that the mark is recognized by the authorities as well under the legislation or the statute of that territory. Registration provides a statutory right to any brand owner to protect itself against any alleged infringement. The owners of a trademark tend to protect themselves in their territories and often across their territories. The easiest process of getting international recognition is through the Madrid Protocol.

UAE[Picture Credit: istockphoto]

The Madrid System is a convenient and cost-effective solution for registering and managing trademarks worldwide. The system came into force in 1989 through a multilateral treaty namely, the Madrid Agreement Concerning the International Registration of Marks, 1891. The companies, through a single application form and requisite fees, attain protection in up to 128 countries. Independent applications are far more expensive than a single application and therefore, the companies across the territories prefer this system. Herein, the companies can register in their local IP office for international territories. Therefore, it is advisable to be a part of this community.

Following the path of many efficient and commercially strong countries such as the USA, EU and Japan, the United Arab of Emirates also decided to accede to the Madrid Protocol on September 28, 2021. The protocol was set to come into force on December 28, 2021, giving the country an international exposure in the intellectual property arena.

Accession to the protocol

The government of the UAE in September 2021, declared to join the Madrid Protocol system which was sought to come into force on 28th December 2021. The move will make the country the 109th country in the world and third country in the Gulf Cooperation Council to be the signatory to the Madrid Union. It simply means that UAE as a territory shall be available to various international companies for trademark protection. Similarly, the companies within the country shall also be able to attain protection in the trademark offices of other countries. This development in the UAE’s trademark law has been long desired and anticipated by companies globally. Thus, this development is a positive step for companies and individuals within the UAE.

Implications for companies in the UAE

The impact of the decision to be a signatory to the Madrid Protocol is manifold. The development would definitely enable multiple benefits in trademark protection for the national level trademark holders within the country. The country’s adjunction to the Madrid system will enable companies and organizations within the UAE to apply for international trademark protection inclusive of all the member nations by way of the World Intellectual Property Organization (WIPO) based in Geneva, Switzerland instead of applying to all the nations separately. Considering the operational and overhead costs that are to be incurred by organizations, an additional cost of trademark registration is unwanted and hence, the accession has successfully reduced the overall costs of the firms in the territory. Moreover, the Madrid system is centralized, helping the firms to manage their portfolio at once on one platform and eliminate the countries wherein the trademark either expires or no longer relevant. Thus, it can be rightly stated that it provides a ‘one-stop shop’ for the companies internationally.

Implications for companies outside the UAE

The companies wishing to register their trademarks in the UAE as well, shall now be able to register through the Madrid system and save the additional cost. Through one application and one-time fees, the companies situated outside UAE’s borders shall be able to attain the required registration. An added advantage is that further to the process of registration, certain changes such as change in the name or address of the trademark holder, change in ownership or a limitation in the goods or services to be designated can arise and due to a single portfolio, the owners can easily change the information for several Contracting parties at once through a simple procedure and payment of certain fees. Further, there shall be only one expiry and renewal date for all the countries.

Similarly, the Trademark Offices also enjoy the advantages of the accession. The trademark offices need not examine for compliance with formal requirements or classify the goods and services or publish the marks in their own journal. Moreover, they also receive the compensation for the work they perform and the individual fees paid to the international bureau is distributed among the Contracting Parties in which the registration is sought. Further, the supplementary and complementary fees are distributed among the remaining Contracting Parties in proportion. Any further profits are distributed among the Contracting Parties proportionately.

Disadvantages of the accession to the Madrid System

As the coin has two sides, the Madrid system also has its own advantages and disadvantages. Some of the downsides of the protocol are as follows:

  • The registration is only limited to the member countries and therefore, the trademark owners will have to pay separately for other countries.
  • The examination process is conducted separately for countries and therefore, the owners have to comply with all laws and procedures.
  • The deadline to file a response to the examination report is short and therefore, at times, it can be challenging for the applicants to appoint agents and file the responses.
  • Many countries might not have updated their laws to include international registration which can act as a challenge and lead to enforcement issues.

Therefore, while using the Madrid system, it is essential to understand the pros and cons and then, take a decision.

Need of new rules and regulations in the UAE

The Madrid Protocol accession is new to the United Arab of Emirates. The guidelines related to the individual fee for UAE designations and the deadline of intimation of provisional refusals by the UAE’s Trademark Office to WIPO’s International Bureau have been released. The fees has been assigned as CHF 1630 per mark per class and the office has accepted an eighteen months extendable deadline of communicating the refusals. Some of the points that are yet to be released are as follows:

  1. How will Madrid applications be filed? It is anticipated that setting up a system of online filings shall take time and thus, for the time being, manual filings will be viable.
  2. What will be the handling charges for Madrid filings through the UAE’s office?
  3. Whether the office in the UAE will have its own team to handle the matters? How will the office communicate to the WIPO?
  4. In Bahrain and Oman, the International Registration Holders are provided a local registration certificate. Whether the said certificate will be provided by the UAE’s Trademark Office?

The information regarding the said issues is awaited for both the domestic and international trademark owners. Considering the novelty of being part of the system, the trademark office in the United Arab of Emirates needs to assess the internal and external environment and subsequently, make guidelines and regulations.

Conclusion

The UAE’s accession to the Madrid Protocol is evidently a significant move towards encouraging the transborder cooperation and providing economic and convenient solutions for brand owners and firms around the world, including in the Middle East. Transferring to the WIPO’s Madrid system signifies advanced and concerted efforts on the part of the government. The move was already anticipated because the business owners in and across the country were eager to register themselves internationally and in the UAE respectively. It, thus, strengthens the economic power of the firms globally. Further, the WIPO has also announced that other GCC countries like Saudi Arabia shall soon become a part of the Madrid Protocol. Hence, this is truly a move worth celebrating to ensure further development of trademarks in the IP sector of the United Arab of Emirates.

Author: Tanya Saraswat – a student at School of Law, Narsee Monjee Institute of Management Studies, in case of any queries please contact/write back to us via email chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

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