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8 December 20227 minute read

The UAE and the Madrid System - How is it going so far?

This article was originally published by The Oath, with the permission of the publishers. For further information visit the The Oath website.

As the one-year anniversary of the UAE having joined the Madrid System approaches, Saba Al Sultani and Alicia Ma of DLA Piper take a retrospective look at what has changed since the country’s accession to the Madrid Protocol on December 28, 2021.

The UAE is a territory of core importance to most brand owners. It also happens to be one of the most expensive countries in the world in which to secure trade mark protection. That, coupled with the fact that the supporting document requirements can be onerous and expensive (e.g., legalised Powers of Attorney), has meant that news of the country joining the Madrid System was met with great interest. The extent to which filing through the Madrid System would offer cost savings as well as ease any administrative burdens has long been pondered, but arguably, any potential drawbacks have probably been given less consideration.

Protection and enforcement in the UAE

Holders of International Registrations (IRs) are now able to designate the UAE, either in a new IR or as a subsequent designation within an existing IR. However, there are still a number of potential hurdles to overcome or considerations to be made before the mark can be protected in the UAE.

One such consideration is whether the goods and services of interest are available in the UAE. For example, certain goods and services, such as alcohol products, that are generally prohibited for a national trade mark registration due to public policy grounds will also be rejected by the UAE Trade mark Office (TMO) for a UAE designation under an IR, even though it may be granted under the basic registration.

If a provisional refusal is issued, either due to an objection by the TMO or because of an opposition by a third party, a brand owner will still be required to engage a local representative in order to respond to the refusal. If that happens, the requirement of submitting a Power of Attorney (POA) legalised up to the UAE Embassy (followed by local legalisation before the Ministry of Foreign Affairs) in time can present a practical difficulty to a foreign brand owner, if a local counsel has not yet already been properly appointed. In a recent workshop on the Madrid System hosted in Dubai by the World Intellectual Property Organization (WIPO) and the Emirates Intellectual Property Association (EIPA), a UAE TMO official suggested that one should at least present a notarised POA, if full legalisation requires a longer time to complete. Whilst there has been no formal notification that a notarised POA is generally accepted, this is a good indication that the UAE TMO is willing to show flexibility in certain instances.

How to prove ownership and validity of the right under an IR in the UAE is also one of the most frequently asked questions by brand owners. In theory, a Statement of Grant of Protection should be issued by the TMO, if the examination process is completed without any refusal and no opposition is filed within the prescribed period. However, it remains untested as to whether such a Statement (if issued) will be sufficient to prove ownership and validity of rights for the purpose of filing an opposition or a cancellation action, or to take enforcement action before other local authorities, such as filing a complaint with Customs.

In the case of the other GCC countries (Oman and Bahrain) which are already part of the Madrid system, we know that an IR holder must still request a registration certificate for the national designation under the IR from the local TMO, in order to evidence a prior right in opposition and cancellation proceedings, as well as in other enforcement actions before the relevant local authorities. A similar practice of obtaining such proof from the TMO is also likely to be required in the UAE, which could potentially cause some delay in taking action. In certain other countries in the region, such as Iran, it is not possible to rely solely on an IR designation to take any action such as an opposition, or cancellation or infringement actions. In order to take such action, direct national filings are also required and must be filed at the same time as the action is taken (albeit for the purposes of the dispute, the brand owner’s rights are considered to commence from the date of the IR designation). It remains to be seen whether similar requirements will be put in place in the UAE.

As a takeaway point, local advice is still highly recommended to ensure a better understanding of how a UAE designation under an IR may be protected and enforced.

Pratical considerations for outgoing brands

The UAE’s accession to the Madrid Protocol will not only benefit local UAE brand owners (e.g. UAE nationals and companies), but also brand owners in neighbouring non-contracting-party states (such as Saudi Arabia, Qatar and Kuwait) which have a “connection” with the UAE. For example, a Kuwaiti company that has a real and effective industrial or commercial establishment in the UAE may use the Madrid System through its UAE presence.

"While the Madrid System has historically offered a good option for multi-jurisdictional filings, whether or how to use the system is still a strategic decision for a brand owner to make.”

There can be savings on filing costs when designating a number of countries through an IR. Brand owners will also benefit from WIPO’s centralised management system of various designations under an IR, especially for renewals, as well as for change of name and change of address matters.

While the Madrid System has historically offered a good option for multi-jurisdictional filings, whether or how to use the system is still a strategic decision for a brand owner to make. As the “basis” of an IR, the basic mark serves as a foundation for the first five years to keep all designations in full effect. In other words, if the basic mark is invalidated or diminished in its scope of protection within the first five years, all designations in other countries will be impacted to the same extent. It is therefore not surprising that a common strategy to strike off an IR is a central attack on the basic mark. For the brand owner, it would be wise to choose a strong home registration which one foresees to remain unchanged for branding purpose for the long-term as the basic mark for any IR.

As for country designations, it is important to have local advice for any key intended markets in order to try to ensure as smooth a registration process as possible. For example, for an IR based on a UAE trademark registration, while it is possible to claim a class heading which should afford protection to the fullest extent under that class, the same description of goods and services may not be acceptable or desirable in other countries, such as in the US which generally requires more precise identifications for various reasons and in China which examines the items of goods and services against a local classification guide. Provisional refusals will be triggered due to the objection of certain goods and services. One may find that the cost-saving upfront for filing is then partially or totally negated by having to incur fees to respond to such objections.

There are other a number of factors to consider when deciding on the form and territories in which to file for a mark as an IR, such as language of the mark, projected life span, geographic coverage of use, points relating to potential cultural or religious sensitivity. As things currently stand, we consider that registration at a national level remains a sensible option for key brands in core classes of goods and services, especially to provide for a straightforward basis for enforcement actions.