UAE accedes to the Madrid Protocol & Nice Classification

8 minute read
01 February 2022

Author(s):

As of 28 December 2021, the UAE became the 109th Member State of the Madrid Protocol, and the third Gulf Cooperation Council country to become a member (following Bahrain and Oman).

On 8 December 2021, the UAE issued a Federal Decree in which it acceded to the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks ("The Nice Classification"). This came into effect on the date of issue.



Accession to the Madrid Protocol

The UAE joining the Madrid Protocol is fantastic news for international brand owners, and even more so for UAE brand owners. It provides a further alternative for protecting trademarks overseas, which could lead to significant cost savings. It may also provide an opportunity for brand owners that have a real and effective presence in the UAE, an ability to use the system.

For international brand owners, they are now able to include the UAE as a designation for any new International Registration filings from 28 December 2021, or as a subsequent designation to any existing International Registration. Rights holders with a possible interest in the UAE, or who have not taken steps to protect their trademark(s) in the UAE previously, should revisit their Madrid Protocol filings and consider adding the UAE as a designation/subsequent designation.

For UAE brand owners, (including UAE nationals, UAE companies, or entities with a real and effective presence in the UAE), they may now use their UAE home applications/registrations as a basis for International Registrations through the Madrid Protocol. This presents a potentially more cost effective and efficient option to secure trademark rights in other Member States around the world.

UAE brand owners could potentially benefit from cost savings of at least 20% over national filings into Member State countries. These cost savings at the filing stage also lead to further cost savings in managing and renewing the overseas registrations in due course, as for international registrations, these actions are centrally managed, so offer further cost savings over management of national filings.

This could present a useful opportunity for brand owners in other countries in the region, which are not yet members of the Madrid system. For example, a Saudi company, which has a real and effective presence in the UAE (such as a UAE branch office for a Saudi company), could potentially use the UAE presence as a means for using the Madrid system.

There are drawbacks to the system, so care should be taken as to whether using the system is the best option for your company. For example, the international registration will be dependent on the home registration for five years, so you need to have a solid base upon which to base the international registration. Gowling WLG's UAE IP team is well placed to work with you on the potential use of the system as part of your international trademark strategy.

Some of the finer points of the UAE's accession are yet to be released, but what we know is:

  • the UAE will charge an individual fee for UAE designations (CHF 1,630 per mark, per class); and
  • the UAE has accepted the 18 month extendable deadline in which to notify WIPO's International Bureau of provisional refusals of UAE designations.

We await guidance from UAE officials on a number of areas around Madrid coming into force in the country. Some of these include:

  • how Madrid applications will be filed through the UAE IPO (we understand the online filing system is being updated for Madrid filings, so in the short-term it will be a manual filing system working closely with the UAE officials);
  • what the UAE's handling charges will be for Madrid filings through the UAE's Trademark Office (TMO) as the home office;
  • whether the UAE TMO will have a dedicated Madrid team to handle the matters and how the officials will notify UAE based applicants of matters, and correspond with WIPO (as all correspondence from WIPO in relation to the IR is routed through the home TM office); and
  • whether it will be possible for International Registration Holders who designate the UAE, to be able to obtain a local registration certificate once the UAE designation is protected, which is offered in Bahrain and Oman.

However, what is clear is that this provides qualifying brand owners with an additional option of using the Madrid Protocol to protect its trademark interests in, or from, the UAE.

It is a significant development and one which comes about in the midst of numerous reforms the UAE Government is making to its IP laws and other laws in and around innovations and tech. Recently, we have seen new Federal Trademark, Copyright and Patent laws issued, as well as new Federal Data Protection and Cyber Crimes laws.  As the UAE continues on its fast track towards a knowledge-based economy, we expect further amendments and new laws to come into effect in the months and years ahead. It is an exciting time to be practicing in the UAE and is very much an area for rights holders to keep a watching brief on developments.

Accession to the Nice Classification

The UAE has formally acceded to the Nice Classification for the first time. Previously, elements of the Nice Classification were incorporated into the old UAE Trademark Law. The UAE Trademarks Department subsequently followed the Nice Classification despite not acceding to it.

As the office has previously followed the Nice Classification, the accession is unlikely to lead to significant changes in day-to-day practice for trademark owners.

However, the Implementing Decree has accepted the Nice Classification as a whole (and any future amendments to the Nice Classification) without any limitations. What does this mean for goods or services it has not been possible to protect in the UAE to date, such as Class 33 (alcohol products) where it has not been possible to file applications in this class? Similarly, for items contained within the Nice Classification, which have met with objections (alcohol products in Class 32, alcohol related services in Class 43, gambling/betting services in class 41, pork in Class 29 etc.). These items have generally faced objections on public policy grounds due to the cultural sensitivities. Some items, such as "bar services" have been accepted on occasion in the past, but also faced objections, so it can sometimes depend on whether the official has recognised the potential relevance to alcohol.

With the UAE acceding to Madrid, we wait to see whether the UAE officials will continue to raise public objections to any UAE designations which cover Class 33, or include other goods or services which have previously met with objections. Of course, Madrid filings will be examined in accordance with local law and practice, and so it is likely that we will still see issues raised for any trademark, or goods or services within an application, which are deemed to cause public offence to the cultural sensitivities of the UAE.

This is something to monitor, especially for companies who to date have only been able to secure protection for non-alcoholic versions of their products, or secured protection for services through general terms, without specific reference to terms which could invite objections.

Next steps

We will continue to monitor the developments around the Madrid and Nice accessions by the UAE, and provide updates in due course.

With the Madrid Protocol coming into force in the UAE, it is likely we will see a growth in trademark filings in, and from, the UAE.

Gowling WLG's UAE based team is well placed to assist entities looking to use the system to obtain protection in or from the UAE. All members of our Trademark Prosecution team have experience in using the system, with some members each having more than 20 years' experience of using the system.

We can help you on your Madrid & Nice journeys to, or through, the UAE.


NOT LEGAL ADVICE. Information made available on this website in any form is for information purposes only. It is not, and should not be taken as, legal advice. You should not rely on, or take or fail to take any action based upon this information. Never disregard professional legal advice or delay in seeking legal advice because of something you have read on this website. Gowling WLG professionals will be pleased to discuss resolutions to specific legal concerns you may have.

Related Insights & Resources

Abstract photo of person selecting virtual icons On-demand webinar
28 April 2022 Lifecycle of a smart idea | How privilege can be used to protect your innovations and products CLE/CPD:1 hour of Professionalism content with the LSO, 1 hour of Ethics content with the Law Society of BC, and 1 hour of substantive CPD credits with the Barreau du Québec