As of this date, local trade mark owners in the UAE are supposedly able to start using the Madrid System to protect their trademarks by filing a single international application and paying a single set of fees. Foreign businesses and trade mark owners on their side may seek trade mark protection in the UAE through the Madrid System by filing a new international application, or by filing a subsequent designation of the UAE in an existing international registration (IR).
How the UAE Trade Mark Office is dealing with Madrid
The UAE Trade Mark Office (“TMO”) is still in the process of adapting to the major changes recently made to the UAE Trade Mark Law but Madrid-related updates are likely to happen soon.
The Ministry is already receiving international applications from outside the UAE (i.e., foreign applicants filing Madrid applications designating the UAE) but nothing can be initiated from the UAE as yet.
More than 500 applications have already been filed with WIPO – many of which being subsequent designation of the UAE using existing international registrations, originating mainly from Europe, Japan and the USA.
One reason for this success being that designating the UAE through a Madrid application, with respect to one class of goods or services, costs only as little as CHF1630 (around US$1700).
The way IR will be dealt with is still a bit uncertain and further costs could be incurred should the UAE TMO issue provisional refusals – which is likely.
The procedure following the notification of a provisional refusal of protection, will have to be determined and carried out directly between the applicant (or its representative) and the UAE TMO.
Provisional refusals – if any – will have to be issued within 18 months from the date of publication in the WIPO Gazette of International Marks. If no provisional refusal is issued in time, in accordance with the Madrid Protocol provisions, the trade mark will be deemed accepted[1].
The notification of provisional refusal issued by the TMO will have to include the grounds for refusal, time limit for requesting review or appeal, authority to which such request for review or appeal should be made and whether or not the assistance of a local representative is mandatory.
In a nutshell:
If you still have questions or if you want to get ready to use the Madrid system by securing your trade mark in the UAE now, drop us a message.
[1] Article 4 – Effects of International Registration (1) (a) of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (as amended on November 12, 2007)
Author: Sam Grainger & Elise Moine