United Arab Emirates joins Madrid Protocol
Mandated expert report for Dubai cases
Patent law updates
Changes to GCC Patent Office operations
United Arab Emirates joins Madrid Protocol
In what has been a long-awaited development, the United Arab Emirates acceded to the Madrid Protocol on 28 September 2021. The date of enforcement will be 28 December 2021, making the United Arab Emirates the third Gulf Cooperation Council (GCC) country to join the Madrid Protocol. This means that nationals and local entities can utilise the international trademark filing system to protect their brand in up to 124 territories, which often offers a more cost-effective route than national filings. In addition, foreign individuals and entities will be able to designate the United Arab Emirates as part of any Madrid filings, rather than pursuing a national application.
It remains to be seen what impact the accession will have (if any) on the United Arab Emirates' official trademark application and registration fees, and how the Ministry of Economy will handle the implementation in practice, but it is certainly a step in the right direction. The news comes on the heels of recent updates to the laws on IP rights and precedes changes to the IP laws that are expected to be announced soon.
Time will tell whether this move encourages other GCC countries to join the Madrid Protocol, particularly Saudi Arabia, which has been considering accession for some time.
Mandated expert report for Dubai cases
On 13 September 2021, the Dubai courts issued Circular No. 9 of 2021, requiring the submission of an expert's report upon the filing of an IP claim (in addition to construction and liquidation claims).
The report must be prepared by an accredited expert registered with the Centre for Amicable Settlement of Disputes; however, it is possible to have a report jointly prepared with a third-party expert, including those from jurisdictions outside of Dubai.
As the appointment of an expert was commonplace in IP matters before the Dubai courts, the new requirement reaffirms the position that technical expertise in such matters is of paramount importance. Mandating the submission of an expert's report upon filing is also aimed at speeding up the preparation and determination of such cases.
Due to the degree of autonomy that each emirate in the United Arab Emirates has with respect to its judicial systems, it is important to be aware that the circular applies only to the emirate of Dubai.
Federal Law No. 11 of 2021 is due to come into effect in November 2021, having been published back in May 2021. The new law replaces the United Arab Emirates' 2006 IP law and applies to patents, utility models, industrial designs and trade secrets.
The implementing regulations (which have not yet been published) will determine how patents are to be prosecuted; however, in contrast to previous practice, the United Arab Emirates is set to start publishing patent applications, and not just granted patents. This significant step will help with searching and overall strategy when filing locally and is a welcome change.
Further updates will be available in November.
Changes to GCC Patent Office operations
The UAE patent landscape should be considered in combination with the recent changes to the GCC Patent Office operations. While a GCC patent has not been available since 6 January 2021 (applications filed on or before that date remain unaffected), the GCC Patent Office will accept applications, but only from a patent office of a GCC member state. Upon completion of a search conducted by the GCC Patent Office and subsequent prosecution, grant is dependent on the approval of the requesting member state. While the GCC Patent Office is responsible for the search and prosecution, the granted patent will have effect only in the requesting member state and not the GCC as a whole.
For further information on this topic please contact Renee Nugent or Melissa Murray at Bird & Bird by telephone (+44 20 7415 6000) or email ([email protected] or [email protected]). The Bird & Bird website can be accessed at www.twobirds.com.