The Madrid Protocol’s entry into force in the United Arab Emirates (UAE) on December 28, 2021 was welcomed by both international and local businesses. When filing through Madrid in the UAE, brand owners do still need to be aware of local trade mark considerations, which may significantly impact the prosecution of their applications.
One area for consideration, is that the full Nice Classification is not available in the UAE. For example, class 33 is not available under local classification in its entirety. Where certain goods and services are claimed under available classes, these may individually come open to objection under local socio-cultural considerations, such as claiming “night clubs and bar services” in class 43; and “gambling” services in class 41. Including goods or services which are open to objection in specifications of UAE’ filings, may subject the trade mark filing to additional prosecution steps, including potential appeals against refusals.
Further, brand owners should be mindful of local public policy considerations and socio-religious norms when filing. Trade marks which contravene public morals and order, for example, could fall subject to rejection. Special consideration should also be given to trade marks which reflect religious symbols or imagery. Overall, it is advisable to work with experienced legal counsel to navigate the unique trade mark landscape in the UAE to ensure compliance with local laws, regulations, and cultural considerations.