UAE joins the Madrid Protocol International Trademark System

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The United Arab Emirates recently became a member of the Madrid Protocol international trademark system, a development that is likely to be of considerable importance to companies trading in the Middle East. The Madrid Protocol entered into force in the United Arab Emirates on December 28, 2021.

The Madrid Protocol allows businesses located in a member country of the Madrid Protocol system to obtain trademark protection in any of the other 108 member countries by filing a single trademark application. The Madrid Protocol currently extends to many countries of general commercial importance, including the UK, EU, US, Japan and China. It is also possible for owners of Madrid Protocol trademark registrations to extend their trademark protection to other member countries of the system as their business needs evolve. Due to the system’s flexibilities, using the Madrid Protocol to obtain trademark protection abroad can be a very cost-effective mechanism and can also simplify trademark portfolio management in the future.

Along with joining the Madrid Protocol, the UAE is also making significant changes to its national trademark law, including an expansion of the types of trademarks that can be protected, so that it is now possible to seek protection for non-traditional marks such as in the form of 3D marks, unique colors and holograms. At the same time, the new law provides useful clarifications on what is required for a mark to qualify as a well-known mark or mark of reputation, and introduces an administrative procedure for trademark cancellation so that it is no longer necessary to file a lawsuit to cancel an existing UAE trademark registration. This should reduce the cost and complexity of challenging UAE trademark registrations that conflict with prior well-known trademarks of international companies.

It is also expected that the new law will allow the filing of multi-class trademark applications. The current position in the UAE is that if a company requires the protection of its trademarks in relation to goods and/or services which fall under more than one class of goods and services, it is necessary to file separate applications in each class of interest. Following the adoption of multi-class applications, it will be possible for companies to file a single national trademark application in the UAE covering the number of classes required, thus simplifying the application process, reducing costs and making the management of the next brand wallet much easier.

The above changes should make it much easier for businesses to secure and enforce their trademark rights in the UAE. If further information is required, please contact your usual Marks & Clerk attorney.

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