The advantages of Madrid are plentiful. However, as a new pathway for trade mark registration in the UAE, it is unchartered territory. Applicants should weigh up the pros and cons carefully before opting for the cheapest route to secure protection.
After much deliberation, the UAE has joined the Madrid Protocol for protection of International Trade Marks. This came into effect on 28 December 2021 making the UAE the 109th Member of the Madrid System.
What are the main advantages for overseas businesses?
In simple terms, applicants will be able to:
1) benefit from lower fees.
2) cover more than 1 class of goods/services in an application.
3) add the UAE as subsequent designations to existing International Registrations.
4) dispense with the formality of having to furnish a Power of Attorney for filing applications.
As a new system, there are still some unknowns. Will the UAE Trade Marks Office examine as quickly [as national applications] or will an applicant be in for an 18 month wait to have an application examined? If there is an office action or opposition, it appears that an overseas Applicant will still be expected to furnish a notarised and legalised Power of Attorney within 30 days, per the usual practice. This will put an applicant under extreme pressure.
Will a Statement of Grant confirming registration be acceptable to other government bodies (e.g., the Department of Economic Development and Customs who require a registration certificate to be able to tackle counterfeit activity)? We would hope this to be the case.
If swift enforcement is required, the national route may be a safer route until the IR system is in full swing.