In Brief

The United Arab Emirates (UAE) has become a signatory state to the Madrid Protocol, which will enter into force on 28 December 2021. The UAE will become the 109th state globally and the third state in the Gulf Cooperation Council (GCC) following Bahrain and Oman, to join the Madrid Union, which provides trademark protection for its member states across multiple jurisdictions. This is a long awaited and welcome development in UAE trademark law and practice.

Key Takeaways

  • This development provides benefits for both UAE-based rights holders and international rights holders looking to secure trademark protection in the UAE and although some of the finer points of the UAE’s accession have still to be clarified, such as the fees payable, these matters are expected to be addressed prior to the Protocol coming into force.
  • The accession to the Madrid System allows an applicant to acquire trademark protection in the UAE and other member nations through the World Intellectual Property Organization (WIPO) without registering national trademarks or paying local agents’ fees. In this respect, the Madrid System offers a ‘one-stop shop’ solution for trademark holders to obtain and maintain protection in multiple markets.
  • Filing through the Madrid System is cost efficient on the following fronts:
    ○ brand owners can file a single application in one language and pay the applicable fees to secure trademark protection in multiple territories;
    ○ the Madrid Protocol can help brand owners manage their brand portfolio centrally, and facilitate expansion into and trademark protection in new markets; and
    ○ it removes the administrative burden and complexities associated with obtaining registration of national applications, which is especially useful for international rights holders.

About the Madrid Protocol

The Madrid Protocol is an international treaty, administered by the International Bureau of WIPO, which has the aim of facilitating the procurement and maintenance of trademark registrations in up to 124 territories by filing a single international application with the national or regional IP office of a Madrid System member.

Adopted in 1989, the system provides an efficient method of achieving expanded international protection for a trademark that has already been applied for or registered in the applicant’s home country (also known as the country of origin).

For further information and to discuss what this development might mean for you, please get in touch with one of our team.

Author

Tarek Saad is a Dispute Resolution partner in the Dubai office and is also seasoned in maritime and insurance law. He has over 23 years' experience in general litigation in the Middle East, and has been practicing in the UAE for more than ten years. Tarek has extensive experience in civil, commercial, criminal, real estate and shipping disputes as well as intellectual property and employment litigation under UAE law. He appears before the UAE courts at various levels.

Author

Kellie Blyth is a Counsel and Head of the UAE Data and Technology practice of Baker McKenzie Habib Al Mulla, based in Dubai. An experienced technology and privacy lawyer, Kellie has been advising local and multinational clients in the technology, telecoms, financial services, insurance and automotive sectors, on their strategic IT projects, helping them develop, commercialise and implement digital and technology solutions whilst managing legal and regulatory risk.

Author

Mona Matouri is a paralegal in the UAE Intellectual Property Practice Group of Baker McKenzie Habib Al Mulla based in Dubai. She specializes in trademarks portfolio management and brand protection and has over 6 years' experience in the MENA region in a wide range of industry sectors.

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