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Protecting a Trademark in the UAE through the Madrid System: A Practical Guide

Protecting a Trademark in the UAE through the Madrid System: A Practical Guide

Since 28 December 2021, the UAE has been a member of the Madrid System. Brand owners from other member countries can now protect a trademark in the UAE by designating it in an international registration filed through WIPO, instead of filing a separate national application with the Ministry of Economy.

For many businesses this is simpler and cheaper. But a designation of the UAE is still examined under UAE law and practice, and some of the steps happen locally. This guide explains how it works and where it needs attention.

How a UAE designation works

  1. Filing: the international application is filed through the trademark office of the holder's home country, based on a home application or registration, and designates the UAE.
  2. Notification: WIPO records the international registration and notifies the UAE.
  3. Examination in the UAE: the UAE examines the mark like a national filing, against its legal requirements and earlier marks.
  4. Provisional refusal: the UAE has 18 months to notify WIPO of a provisional refusal.
  5. Publication and opposition: accepted international marks are published in the UAE trademark bulletin, which opens the opposition period for third parties.
  6. Protection: if there is no refusal, or the refusal is overcome, the mark is protected in the UAE as if it had been registered nationally.

Madrid or a national filing?

  • Madrid suits brand owners who want protection in several countries at once, with one application, one language, one renewal date and central recording of changes such as a new owner or address.
  • A national filing can suit better when the UAE is the main or only market, when the mark has an Arabic version that should be protected in its own right, or when the home registration is not yet secure.

UAE fees for a designation are charged per class, so the cost grows with each class added. WIPO's fee calculator shows the current amount.

Points that often go wrong

  • Dependency on the home mark: for five years, the international registration depends on the home application or registration. If the home mark is refused or cancelled in that period, the UAE designation falls with it.
  • Goods and services: the UAE follows the Nice Classification, but some goods and services can still meet objections on public order or cultural grounds, for example alcoholic drinks, pork products and gambling services.
  • Refusals need a local response: a provisional refusal from the UAE is answered under UAE procedure. In practice this is done through a trademark agent registered in the UAE, within the deadline set in the refusal.
  • Arabic versions: customers in the UAE often know a brand by its Arabic name. An international registration only covers the mark as filed, so the Arabic version may need its own protection. See our guide to Arabic and English trademarks.
  • Device marks: a logo with stylised letters is published as an image. Watching services that search only by text can miss it, so a monitoring service should also review the published images.

Watching international marks in the UAE

International marks designating the UAE are published in the UAE bulletin, often in large numbers in each issue. Owners of earlier UAE marks have only 30 days from publication to oppose, so international filings need to be watched like national ones. Read more about trademark opposition in the UAE.

How we help

A&A Intellectual Property is a registered trademark agent in the UAE. We work with brand owners and foreign IP firms on UAE designations: clearance searches before filing, responses to provisional refusals, oppositions and watching of the UAE bulletin. Foreign firms can find more on our foreign associates page.

Before designating the UAE, run a free preliminary trademark search to see whether similar marks already exist in your class.

This article is general information, not legal advice. Fees and procedures change; please contact us for advice on your matter.