The United Arab Emirates has recently become a member of the Madrid Protocol international trade mark system, a development that is likely to be of considerable importance to businesses that trade in the Middle East. The Madrid Protocol came into force in the UAE on 28 December 2021.
The Madrid Protocol allows businesses located in one member country of the Madrid Protocol system to obtain trade mark protection in any of the other 108 member countries through the filing of a single trade mark 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 trade mark registrations to extend their trade mark protection to other member countries within the system as their business needs change. Due to the flexibilities of the system, using the Madrid Protocol to obtain trade mark protection overseas can be a very cost-effective mechanism, and can also simplify management of the trade mark portfolio moving forward.
Alongside joining the Madrid Protocol, the UAE is also introducing significant changes to its national trade mark law, including a broadening of the types of trade mark that can be protected, such that it is now possible to seek protection for non-traditional trade marks such as 3D marks, single colours, and holograms. Alongside this, the new law provides useful clarification of what is required for a trade mark to qualify as a well known or famous trade mark, and introduces administrative trade mark cancellation proceedings such that it is no longer necessary to bring court proceedings in order to cancel an existing UAE trade mark registration. This should reduce the cost and complexity involved in challenging UAE trade mark registrations that conflict with earlier well known trade marks of international businesses.
It is also expected that the new law will allow for the filing of multi-class trade mark applications. The current position in the UAE is that if a business requires protection for its trade marks in relation to goods and/or services that fall into 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 businesses to file a single national trade mark application in the UAE covering however many classes are required, thereby simplifying the application process, reducing costs, and rendering management of the subsequent trade mark portfolio much easier.
The above changes should make it much easier for businesses to secure and enforce their trade mark rights in the UAE, and if any further information is required, please contact your usual Marks & Clerk attorney.
