Bianca Gracias is a partner at ICLO, a UAE-based legal services firm
The Madrid System is a convenient and cost-effective solution for registering and managing registration of trademarks in several countries around the world. The Madrid Union currently has 109 members, covering 125 countries, and the Madrid Protocol adopted in 1989, facilitates this filing process with the World Intellectual Property Organisation (WIPO).
What does this mean (in clear English) for you as a business owner in the UAE?
(i) you file one trademark application with the WIPO (an international organisation) and potentially get protection in 125 countries which is great for 'global branding' of your trade or service mark.
(ii) you save costs and time of registering your trademark in multiple jurisdictions.
(iii) you receive protection in every member state that subsequently joins (subject to their non-objection of course).
After 28 December 2021, if you have either applied for a trademark registration or hold a valid registered trademark in UAE, you can file an "international trademark application" with the Trademarks Directorate in the UAE Ministry of Economy. Once verified, this is forwarded to WIPO where WIPO checks whether the basic filing requirements have been fulfilled, following which the trademark is entered in the international register granting international registration and forwards this information to the Trademarks Directorates in 125 designated member countries. Each member country has 18 months to file objections and if no objections are received, your trademark is then automatically registered in all the member countries.
When an International Registration Application is received by the Trademark Directorate of a member country, it will typically undertake this process:
Examine the trademark application and either accept or reject it. The trademark application may be rejected on the following grounds:
Conflicts with existing rights of a third party,
The trademark lacks distinctiveness,
The trademark is descriptive or generic in nature, or
The trademark is likely to cause confusion.
Call for a hearing if more details or explanation are deemed necessary.
Publish the trademark in its official gazette for third party objection; and
Proceed to grant registration if no objection is received within the time frame provided.
From 28 December 2021, the UAE Ministry of Economy's role will be streamlined to verify international trademark applications and forwarding the applications to WIPO.
What you should be mindful of:
(a) not all the Arab states have acceded to the Madrid Protocol which means you still have to be mindful of protecting your trademark separately in these non-member states.
(b) member states have 18 months from filing at WIPO to object to the registration of a trademark.
(c) Assignment or transfer of ownership of a trademark to a person or entity of a non-member country is prohibited under the rules of the Madrid Protocol.
If this heralds good news for your business and you are ready to learn of costs and processes, here is the direct link with details directly from the WIPO website: https://www.wipo.int/madrid/en/
After you have seen the costs, you will agree this comes as a relief especially in terms of cost for all the founders of UAE businesses who have long striven to protect their brands and marks in multiple jurisdictions. Here is a live list of all the member countries who have acceded to the Madrid Protocol: https://www.wipo.int/madrid/en/madridgazette/remarks/2009/50/gaz_st3.htm