There is some good news for trade mark owners coming out of Geneva that the United Arab Emirates will be joining the Madrid Protocol aka the International Trade Mark System.
It will be possible to designate the UAE in International applications from 28 December 2021. Although countries can elect not to accept subsequent designations of International Registrations that date before their accession, the WIPO website is indicating that these will be able to be made for the UAE.
The Government only approved its accession very recently, so this is a rapid signing up, but it is good news that another country in the region is on board. It joins other Gulf Cooperation Council states Bahrain and Oman, as well as its neighbour across the Strait of Hormuz, Iran, as member states.
Made up of seven Emirates, the UAE is an important regional country for brand owners in the Middle East. While famous for its oil wealth, it has made efforts to diversify into a service-based economy and businesses providing business and IT services, financial services and those involved in tourism and construction will take interest in a development that should see them be able to protect their brands more easily. Luxury goods abound in the shopping malls of Dubai, in particular, and Dubai is a significant port for goods arriving into and passing through the Middle East so retailers and manufacturers will also take interest.
We can expect the UAE to make various Declarations shortly that will apply to their membership of the Madrid Protocol. One we can anticipate it making is that it will receive an Individual fee and we can anticipate that it may charge the highest Individual fees of any member state (likely surpassing Bahrain - 1,710 CHF for one class).
This said, we expect this to be less expensive than filing nationally. There will be no local agent’s fees to add on and, of course, there is the benefit of being able to include other countries in an application to benefit from more overall cost savings. New applicants in the UAE will also not be bitten by having to go through the time and not inconsiderable expense of providing a legalised Power of Attorney. Powers of Attorney are not required for filing International applications.
We can also expect an extension to 18 months of the refusal period. There should be no problem with this being met by the UAE Trade Marks Office – even with an increase of filings – as it is currently comfortably working within these timelines and works efficiently and electronically. It will be worth looking out for the first Provisional Refusals to issue and seeing what deadlines are set for them. If a legalised Power of Attorney is needed (and in a short timeframe) then this could be a headache for applicants.
The International system allows multi-class applications, which is another benefit over the single class national system in the UAE. Although it is not possible to file Class 33 (covering alcoholic drinks) nationally, it is possible under the International system. However, any application covering Class 33 should be refused by the UAE Office with no chance of a successful appeal. In other words, it would be a waste of money.
It is possible to register UAE trade marks with the Customs authorities of some of the Emirates, particularly the major transit point of Dubai. For International Registrations protected in Dubai, we anticipate it may be necessary to obtain a local Certified Copy (in Arabic) for recording with Customs.
Overall, this is a very positive development and will save trade mark owners time, money and reduce their administrative burden around protecting trade marks in the UAE. It will also make it easier for Emirati businesses to protect their trade marks overseas.