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Introduction: ``Waiting for patents'' is the biggest risk for startups where speed is vital "I've...
Table of Contents
1. Background of the UAE Intellectual Property Law Amendment
The United Arab Emirates (UAE) has implemented comprehensive legal reforms to its intellectual property laws. With regard to trademark law in particular, with the country's accession to Madpro (Madrid Protocol), it has become much easier for foreign companies to obtain trademark rights.
The new intellectual property law has been approved by UAE President Sheikh Khalifa bin Zayed Al Nahyan and will come into full force from January 2, 2022. Important changes have been made to trademark law, design law, and patent law, which companies considering the UAE market should be aware of.
Key points of this article:The correction of UAE intellectual property law is a large-scale one that spans three areas: trademarks, designs, and patents. In particular, joining Madpro has opened a route for Japanese companies to obtain trademark rights in the UAE through international trademark applications.
2. Main revision points of trademark law
The revision of the Trademark Law has two major pillars: expanding the scope of protection and simplifying the application procedure.
Expansion of protection:In addition to conventional text and figure trademarks, three-dimensional trademarks, holograms, and sound trademarks are now newly protected.
In addition, the following important changes are included:
- Amendment of regulations regarding trademarks and geographical indications linked to the names of specific geographical regions or countries
- Abolition of trade license requirement for trademark registration
- Granting small and medium-sized enterprises temporary protection of their trademarks while participating in exhibitions
Multiple classification applications now possible:Under the new Trademark Law, it is now possible to specify multiple classifications in one application. Previously, separate applications were required for each category, but this is expected to improve the efficiency of procedures and reduce costs.
3. Joined MadPro - International trademark applications now possible
The UAE acceded to the Madrid Protocol (MadPro) on 28 September 2021, becoming the109th member state of the Madrid System. It is the third member state of the Gulf Cooperation Council (GCC), following Bahrain and Oman. The Protocol entered into force on 28 December 2021.
Significance of joining MadPro:Japanese companies can now obtain trademark rights by designating the UAE as a country by filing an international trademark application (MadPro application) through the Japanese Patent Office. There are significant advantages in terms of procedures and costs compared to filing local applications individually.
Note:For provisional refusal (notification of provisional refusal), opposition, and appeal of international registration, it is still required to appoint a local representative. Even if you apply for MadoPro, if a reason for refusal is issued during the examination stage, you will be required to deal with it through a local agent.
4. Changes in the Design Law
An important revision was also made regarding industrial design. As a criterion for determining novelty, an item is considered new only if it has not been published, used, or otherwise made available to the public before the filing date.
Extension of protection period:The protection period for a design has been extended to 20 years from the filing date. This allows for long-term design protection.
5. Changes to patents and utility models
The new Industrial Property Law brings major changes regarding utility models. It is now possible to convert a utility model application into a patent application by meeting the conditions set by the Enforcement Regulations.
Provisions have also been established regarding the grace period (exception for loss of novelty). Disclosure of information by the inventor or a third party who obtained the information directly or indirectly from the inventor will not affect the ability to obtain a patent if it is made within 12 months before the filing date.
6. Comparison list of revised contents
The table below summarizes the main changes in this revision of the Intellectual Property Law.
| Field | Before revision | After revision |
|---|---|---|
| Trademark - protected | Text, figure, etc. | Add 3D trademark, hologram, and sound trademark |
| Trademark - Classification | 1 application, 1 category | Multi-class application possible |
| Trademark - Application requirements | Trade permit required | Remove trading license requirement |
| Trademark - International Application | Not a member of MadPro (individual application required) | Madpro membership (can be specified in international application) |
| Design - Term of protection | Old law period | Extended to 20 years from the filing date |
| Patent - Grace Period | Not specified | Disclosures made within 12 months of filing date have no effect |
| Utility model | Cannot be changed to patent | Can be converted to a patent application if conditions are met |
7. Contact us
Consultation regarding MadPro application specifying UAE
Please feel free to contact our patent attorneys for any inquiries regarding MadPro applications (international trademark applications) that designate the United Arab Emirates (UAE).
AUTHOR
Takefumi SUGIURA （杉浦 健文）
EVORIX Intellectual Property Law Firm Managing Patent Attorney
Supports clients across IT, manufacturing, startups, fashion, and medical industries, covering patent, trademark, design, and copyright filings through trials and infringement litigation. Specialized in IP strategy for AI, IoT, Web3, and FinTech. Member of the Japan Patent Attorneys Association (JPAA), Asian Patent Attorneys Association (APAA), and Japan Trademark Association (JTA).
