The Madrid Protocol is an international system for obtaining trademark protection in a number of countries and/or regions using a single application. Protection of trademark as an "International Registration" can only be obtained for countries that have joined the system (member countries).2 The Madrid System is currently covering 124 countries.
As UAE continues to implement and strengthen its IP practices, the Government of UAE deposited its instrument of accession to the Madrid Protocol with WIPO on September 28, 2021, being the third country in the GCC to join the Protocol along with the Sultanate of Oman and the Kingdom of Bahrain. The protocol will be effective from December 28, 2021.
This means that the UAE brand owners can apply to obtain trademark protection in 124 member states through Madrid Protocol by filing a single application and payment of a single set of official fees. All non-UAE brand owners can obtain trademark protection in UAE by designating UAE in an international registration.
The guidelines for functioning under the Madrid Protocol and implementation procedures will be announced by the UAE Ministry of Economy by early 2022. These guidelines will clarify and elucidate the filing
procedure and requirements in the UAE under the said protocol.
The advantages of the Madrid system are not restricted only to filing applications but extended after obtaining registration. For example, the owner of a registered trademark, at the end of a 10-year period of protection, can renew the same for all countries identified through filing a single application in WIPO. Likewise, if the international registration is changed (i.e. in name or address) or assigned to a third party, this may be recorded with effect for all designated Contracting Parties by means of a single procedural step.
There are some significant downsides to the Madrid Protocol, as well such as:
- International trademarks can only be extended to the member countries.
- As the examination of the application takes place separately in each country and under its own laws and procedures.
- Deadline to file a response is short and it is sometimes a challenge for the applicant to appoint agents to file a response on time.
- Many counties have not updated their national laws to include international registration which can lead to enforcement issues
The UAE's accession to the Madrid Protocol is a significant move toward encouraging cross-border economic cooperation and providing economic solutions for brand owners around the world, including in the Middle East.
The Government of the United Arab Emirates deposited with WIPO the declaration under Article 8(7)(a) of the Madrid Protocol. As per the declaration, whenever in any international registration where UAE is designated and any subsequent designation and in case of renewal of international application in which UAE has been designated, it desires to receive an individual fee for every such international application.
In line with Rule 35(2)(b) of the Madrid Protocol Regulations, the Director-General of WIPO has set the following amounts in Swiss francs for the aforementioned individual fee, after consulting with the Office of the United Arab Emirates:
- 1,630 Swiss francs for each class of goods or services, when designating the United Arab Emirates in an international application or subsequently;
- 1,630 Swiss francs for each class of goods or services, when renewing an international registration in which the United Arab Emirates have been designated.
Footnotes
1 https://www.wipo.int/madrid/en/news/2021/news_0026.html
2 Madrid Agreement (Marks) (wipo.int)
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