In the following article, the BSA Intellectual Property practice provides updates related to Intellectual Property and trademark owners in the UAE:
- The UAE Cabinet approves accession to the Madrid Protocol system
The UAE recently announced it will be joining the Madrid Protocol for trademark registration systems, which is scheduled to be completed by the end of 2021/early 2022. This accession has been discussed for many years, along with various opinions on the pros and cons of entering the system.
As the UAE continues to improve its Intellectual Property practices, the authorities opted to join the Madrid Protocol, which is an elective international trademark administrative system permitting a unitary filing with legal effect in over 120 different member countries. At present, only Bahrain and Oman are part of the Madrid Protocol in the GCC.
The Madrid Protocol is administered by the World Intellectual Property Organization (WIPO), a specialized agency of the United Nations, headquartered in Geneva, Switzerland. Following the UAE joining the Madrid Protocol, UAE applicants will be permitted to obtain and maintain protection for their trademarks around the world by providing a user friendly, expeditious and cost-effective set of procedures for the central filing of trademark applications in different countries.
Once the Madrid Protocol is in force in the UAE, the responsibility of the UAE Trademarks Directorate will be to certify international applications and forward them to WIPO, after which all other steps will be carried out by WIPO, such as conducting a formal examination, classifying the goods or services, registration of the trademark, publishing it in the International Gazette and notifying the designated contracting countries. The Madrid Union members must decide within very strict time limits whether they can grant protection to the international trademark in their territories. If a designated member does not communicate any objection, within a period of 18 months from the date of notification of the international registration, the trademark, under international registration, will be deemed registered within the territory of that member, as if the same has been registered directly with the IP office of that territory.
The main advantages offered to UAE applicant by the Madrid Protocol would be:
(a) centralized filing of trademarks under the Madrid Protocol: meaning that the UAE applicants do not have to file separate applications in many countries and/or pay fees in different currencies and/or hire the services of local representatives and/or follow different procedures in each country. Instead, UAE applicants would file a single international application before the UAE Trademarks Office and pay fees in a single currency with the benefit of the application having effect in all designated Madrid Union member states; and
(b) central management of trademark under the Madrid Protocol: meaning that after obtaining the international registration, the UAE applicants will take care of only one renewal date and procedure in one place (WIPO) rather than various dates and procedures at different trademarks offices. In addition the applicants can record assignments or make amendments to their trademark registrations in a one single place (WIPO) at a very low cost. Further, the applicants can extend protection of their trademarks to new markets very easily through subsequent designations.
To implement the Madrid Protocol, the UAE Trademark Office must submit its admission papers to the management of the Madrid System and issue implementing regulations clarifying how this will work within the realms of the existing trademark regulations in UAE. We await further update in this regard, particularly concerning the recognition and application of the Arabic language within the Madrid System.
- The UAE Trademark Office approves late filing of Power of Attorney “PoA” – undertaking by attorneys/agents is no longer required nor acceptable
Due to the COVID-19 pandemic, in April 2021 the UAE Trademark Office (TMO) approved the filing of applications based on an undertaking filed by the agent/attorney to submit a notarized and legalized PoA once the formalities are completed. A time frame of 30 days was mentioned in a circular issued by the UAE Trademark Office, however, in practice, the office seems to be more flexible with that time frame. Again, as the UAE Ministry of Economy aims to help brand owners, IP attorneys and agents, and to facilitate their services before the UAE Trademark Office, the late submission of the notarized and legalized PoA to the Trademark Office is intended as a simple process that does not incur any additional official fees or fines.
Following this notification, the UAE Trademark Office issued a further update stating that IP attorneys/agents or legal representatives were required to submit a letter of consent alongside the trademark application from the Applicant. This letter of consent should attest to the fact that while the agent in question had not submitted the notarized and legalized PoA initially, this will be done as soon as the notarized and legalized PoA has been received in the UAE. However, a recent circular by the UAE TMO on June 2nd, 2021, sent to IP attorneys and agents stated that a signed PoA by the applicant will be required at the time of filing the applications and that the undertaking to submit the PoA is no longer sufficient.
- GCC Patent unified system – updates on registry function.
In January 2021, the Communications Committee released Circular 1 for 2021 and briefed the members on the GCC Supreme Council's decision after its annual meeting. The decision was to discontinue the GCC Patent unitary system, with the announcement that the GCC Patent Office will no longer accept any new patent applications after 6 January 2021.
This raised a lot of questions by members and clients, such as (i) what would happen to existing patents (ii) how the existing GCC patents would be viewed and (iii) what would happen to the GCC patent office (“GGCPO”).
Whilst many of those questions remained unanswered by officials for some time, we recently received some clarity on the above questions from the publication of GCC Patent regulation in the Official Gazette No. 22. In this Official Gazette publication, we identified the following developments:
- Articles 1, 4, 9, 17, 18 ,19, 20, 21, 25, 28, 29, 30, 32, and 33 have been replaced in the GCC Patent Regulation.
- It is confirmed that the GGCPO no longer functions as the unitary patent filing/issuance office for the GCC.
- All granted GCC patents will remain valid and enforceable.
- The Economic Cooperation Council will formulate a procedure for dealing with all pending patent applications, filed prior to 6 January 2021.
- The GCCPO will remain operational and act as an administrative body to facilitate the filing of patents in each of the GCC territories, this will require approval from each of the national offices (in the same way that filing a national application would).
- Any patent issued by the GCCPO will be granted on behalf of a GCC member state, accordingly the validity of such patents will be limited to that member state and will not cover the entire GCC region.
- An appellate court has been established, the ‘Judicial Committee of the GCC Council', to hear appeals against the decisions of Committee.
- The implementing regulations of the GCC Patent Law are yet to be issued.
- UAE reform of Intellectual property and trademark laws – amendments are being discussed
Legislators began the process of reforming IP laws and regulations in the UAE in 2018, since then there has been tremendous discussion, exchange of opinion, review and talks regarding what the amendments or new laws should include. Whilst it is still unclear when the new set of laws will be approved and published, we expect many improvements to result from this reform. One of the suggestions made is compile all IP laws under one umbrella of federal law and combine all types of codes under unified federal law. We are unsure as to whether this will be approved or the approach the legislator will adopt but we do expect the amendments or new laws will cover industrial property law, trademark law and copyright law.
- UAE Trademark Office to release Trademark Gazette bi-monthly from June 15th, 2021
In the interim, it appears that the UAE Trademark Office continues to implement improvements in processes and practice to become better positioned when the new laws come to force. The developments in the PoA process and joining the Madrid System set out above are examples. However, we see more changes and enhancements to promptly examine applications as well as assure communications/updates via SMS or email with the applicants and/or their attorneys.
According to a circular issued on June 15th, 2021, the UAE Trademark Office is amending the Trademarks Journal publication schedule to bi-monthly. This should expedite the trademark registration process as applicants can benefit from these frequent releases of gazettes and publish their accepted applications promptly.
- The USA released its USTR Special 301 report removing the UAE from the watch list
The removal of the UAE from the US watchlist was a much-celebrated event for the IP community, government agencies and law enforcement departments. The country has not only been removed from the watch list but also received recognition for its significant progress in Intellectual Property Protection and Enforcement in this year's USTR 2021 Special 301 Report. The UAE is no longer a jurisdiction of concern, according to the report, as the removal of the country from this list reflects significant practical improvements within the IP practice in the UAE.
This has come as encouraging news to the UAE, and particularly to Customs Departments, who received special mentions in the report for their efforts to address and rectify any pre-existing concerns for IP owners. The Customs Departments have undertaken several initiatives over the past year including a variety of workshops and presentations, training officials on how to identify counterfeit goods. They have also increased the level of transparency across the departments, publishing IP enforcement procedures and annual IP enforcement statistics.
Removal from this watchlist is particularly important to the UAE as it is a signal to US citizens and other countries that the UAE is becoming an increasingly attractive place to conduct business, where IP rights are honoured and actively enforced. The failure of any jurisdiction to protect the IP rights of international traders can significantly impact the traders domestic economy and affect the livelihoods of citizens. A lack of support for IP creators is also considered to stall development and innovation. The recognition the Customs Department received also signals to illegitimate businesses that the UAE will not tolerate the distribution or sale of counterfeit goods. With higher levels of risk involved, the UAE is a less desirable place to attempt to move counterfeit goods through. Following this development, we would expect to see enhanced levels of foreign investment from countries such as the US, as they deem the UAE to be a safer place to invest.
It was noticed that the USTR report does call for the UAE Ministry of Economy to review its practices and develop the laws surrounding Collective Copyright Management, an issue which has been outstanding for a period of nearly two decades now.
As we get closer to EXPO 2020, we believe that this accomplishment will substantially position Dubai and the United Arab Emirates on the frontline as a well-established system that actively supports Intellectual Property protection and assists trademark owners with their enforcement.
We are pleased to see such important announcements, improvement and development in the UAE IP system, and look forward to seeing the benefits for our services and clients as well as the continuous upgrade of services infrastructure.
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