16 May 2022

International Trade Marks Update

United Arab Emirates joins the Madrid Protocol

On 28 December 2021, the United Arab Emirates became the 109th member to join the Madrid Protocol. This made the UAE the third country from the Gulf States to join the International system, alongside Bahrain and Oman.

The Madrid Protocol is an International system for obtaining trade mark protection. It provides a simplified and cost-effective approach to owners wishing to register their trade marks in multiple territories and is an alternative to filing individual national trade mark applications. Together with the savings in upfront filing costs afforded by the system, another cost benefit is a single renewal fee, and recordal of changes to ownership or name and address of the owner at a single office. An International trade mark registration can be regarded as a bundle of national rights centralised for formalities’ purposes, but giving its owner the same rights and remedies as a national trade mark registration.

The UAE is an important country for brand owners looking to protect their intellectual property rights. The country is evolving in a variety of sectors, including luxury goods and a variety of services in business development, financial services, IT services, tourism, construction, and property development. The addition of the UAE to the Madrid Protocol makes protection in the UAE more accessible and will allow owners in these sectors to protect their brands more readily.

Protecting the UAE via the Madrid Protocol system presents a significant cost saving opportunity in one of the most expensive trade mark territories in the world. It enables trade mark owners to reduce their administrative costs and responsibilities when filing a trade mark application in the UAE. The International system also allows multi-class applications, another benefit over the single class national system currently in place in the UAE.

If you are looking to expand your protection of an existing application or registration to include UAE, please do not hesitate to get in touch with one of our trade mark attorneys who will be happy to assist.

Southern Cone protection options expand

Chile will join the Madrid Protocol as the 11th member on 4 July 2022, joining its South American neighbours Brazil and Colombia, and boosting protection options for its principal industries of mining, agriculture and wines. Chile is a significant producer of metals and minerals and is the second largest producer worldwide of lithium, for which global demand remains consistently high.

Protection of trade marks in Chile using the Madrid Proptocol is likely to increase the speed of registration, bearing in mind that an International Application must be examined by local offices within 18 months of filing of the application.

Island Members

Jamaica recently became the 110th member of the Madrid Protocol and entered the International system on 27 March 2022. Jamaica is the third Commonwealth Caribbean member to join the International system, alongside Antigua & Barbuda and Trinidad & Tobago.

Jamaica is a country well known for its spices, sauces, beverages, music and tourism. This presents an opportunity for owners to protect their brand in an exciting, developing territory. The addition of Jamaica to the International system will strengthen and simplify options for protecting brands in an important country in the region.

Cape Verde will join the club on 6 July 2022 and will bring the total number of members to 128. Cape Verde, off the West Coast of Africa, is formed of 10 islands, and has a population on its 9 inhabited islands of less than 600,000. It is an emerging tourist destination and has historic links to Portugal.

It is not yet clear whether an International Registration extending to Cape Verde will be recognised by the local authorities due to a lack of implementation of the necessary local legislation, a problem in some African countries. If you are interested in protection in Cape Verde or indeed any territory, our trade mark attorneys can advise you on the best strategy to adopt.