INTRODUCTION
A trademark is defined as any visible sign capable of distinguishing the goods or services of one enterprise from those of another enterprise. This can include words, logos, shapes, colors, sounds, and any other distinctive sign that can be represented graphically. As per the Trademark Law in the UAE, trademark refers to any unique representation of words, names, signatures, figures, graphics, letters, logos, titles, seals, hallmarks, pictures, announcements, patterns, packs, or other similar marks or a combination of marks that are used or intended to be used to differentiate products, goods, or services from any other sources. The decree applies to the whole UAE, therefore, one application will cover the seven emirates. However, a separate application has to be filed with respect to each class of goods or services. Trademarks are registered for ten years from the application date and can be renewed. It is regulated by the Ministry of Economy. The decree also provides for geographical indications and its protection.
It has a total of 61 articles and it had repealed the previous federal law no. (37) of 1992 on Trademarks. Key aspects of the law include the definition of a trademark, conditions for registration, enforcement mechanisms, and provisions for non-traditional trademarks like color, sound, and 3D marks.
Significant Provisions of the Decree
- Article 2 – It defines what a “Trademark” is and the things which could be classified as a trademark, for instance- any object that has a distinctive form, including names, words, signatures, letters, symbols, figures, addresses, stamps, drawings, photos, inscriptions, packaging, etc.
- Article 3 – It provides for the things which cannot be classified or registered as a trademark, for instance- any mark which lacks a distinctive feature, expressions, drawings or marks offending public morals or the public order, marks identical or similar to symbols of a religious nature, etc.
- Article 4 – It deals with the registration of well known trademarks. Specifically, it prevents the registration of a well known trademark, for identical or similar goods or services, unless the application is made by the trademark owner or with their consent. The law outlines factors to determine if a trademark is well known, including its recognition by the public, promotion efforts, etc. The law protects well known trademarks, even those not registered in the UAE, from unauthorized registration or use.
- Article 5 – It provides for a “trademark register”, created at the Ministry in which all the trademarks and their owners’ names, addresses, type of business activities, etc are recorded.
- Article 6 – Any natural or legal person shall have the right to register the Trademark in accordance with the provisions of the decree.
- Article 7 – The application for trademark registration shall be submitted to the Ministry, as per the executive regulations of this decree.
- Article 10 – It provides that when two or more persons apply for a trademark registration simultaneously under one category of commodities or services, their applications shall be suspended until either of the disputants gives up the trademark in favour of the other party or a final judgment is rendered by the competent court.
- Article 11 – It pertains to the right of priority in trademark registration. Specifically, it allows an applicant who has previously filed a trademark application in a member state of the Paris Convention or other relevant agreements to claim priority when filing a similar application in the UAE. To benefit from this priority, the applicant must submit a copy of the previous application and relevant details (date, number, country) within six months of their UAE application. Failure to do so results in the forfeiture of the priority claim.
- Article 12 – It sets out the core controls and timelines governing how the Ministry examines and decides on trademark applications, to ensure it is clearly defined and not confusingly similar to trademarks already registered. The Ministry has the authority to request modifications or impose conditions on an application to ensure clarity and avoid conflicts with existing trademarks. Upon receiving such a request, the applicant must respond within 30 days. The Ministry is required to issue a decision on the application within 90 days, provided all legal conditions are met.
- Article 13 – It provides that the registration applicant, trademark owner, or their authorized representative may file a grievance with the Grievance Committee within 30 days of receiving the Ministry’s decision to reject or suspend the trademark application. If dissatisfied with the Committee’s decision, the applicant also has the right to appeal before the competent court within 30 days of being notified of that decision.
- Article 15 – It deals with the publication of trademarks and the process for filing objections against their registration. Specifically, it outlines that if the Ministry of Economy accepts a trademark for registration, it will be published in the Ministry’s bulletin before the actual registration. This publication allows interested parties to file objections against the registration within a specified period of 30 days from the date of publication.
- Article 17 – It deals with the “Trademark Registration Certificate”, the owner of the trademark shall be given a certificate including the following information: registration number, date of submission of the application, date of registration of the trademark and expiry date of the protection, trademark owner’s name, surname, place of residence, nationality, etc.
- Article 18 – It deals with the presumption of ownership, stating that whoever registers a trademark shall be considered its owner, provided it has been used for an uninterrupted period of at least five years without being involved in any legal proceedings. However, someone who can show that they used the mark prior to the registered owner may request its cancellation within five years of the registration date, provided they did not consent (implicitly or explicitly) to the registered use.
- Article 19 – It states that the owner of a previously registered trademark may, at any time, apply to the Ministry to introduce any addition or modification to the trademark without affecting its particularity.
- Article 21 – It states that the protection period for a registered trademark is ten years from the date of application. The trademark owner can renew the protection for similar periods by applying for renewal with the Ministry, following the procedures outlined in the executive regulations. The renewal process does not involve a new examination of the trademark.
- Article 22 – It specifies that the executive regulations detail the timeframe for submitting renewal applications, along with the procedures and fees involved. Crucially, it states that if a trademark owner fails to renew their trademark within the period stipulated by those regulations, the trademark will be removed from the register as of the expiry date of its protection period.
- Article 24 – It deals with deregistration of the Trademark by outlining the conditions in which it could be done. For instance- voluntary deregistration, deregistration due to non-use or infringement, etc.
- Article 25 – It provides that deregistration or renewal of the trademark shall be announced in the Ministry’s bulletin.
- Article 27 – It stipulates that if a trademark is deregistered whether by expiration, non-use, objection, or another reason, it cannot be re-registered by anyone else (i.e., a third party) for the same or similar goods or services until three years have elapsed from the date of deregistration. However, this waiting period may be shortened if the deregistration was the result of a court judgment.
- Article 28 – It governs the transfer, assignment, and pledging of trademark rights in the UAE. It allows a trademark applicant, owner or their authorized representative to assign or transfer trademark rights, with or without compensation, and even pledge or attach the trademark along with a business or its assets. Ownership can also pass through inheritance, gift, or any other legal means. To ensure the change is effective against third parties, any such transaction must be recorded in the Trademark Register and publicly announced.
- Article 30 – It provides that the owner of trademark may use the trademark himself, and may grant to one or several natural or legal persons a license to use the Trademark, the duration of such licensing shall not exceed the protection period of the trademark.
- Article 31 – The agreement licensing the use of the trademark shall be drafted in writing and duly notarized, and it shall not be required to be annotated or recorded in the register.
- Article 34 – It states that a beneficiary of the license to use the trademark may not assign the license to third parties or grant sub-licenses, unless otherwise agreed with the owner of the trademark.
- Article 38 – It provides that a Geographical Indication being registered as a trademark shall conform to the provisions of this Decree-Law.
- Article 40 – It states that G.I. shall enjoy the protection stipulated under this decree as long as these indications are protected in the country of origin.
- Article 42 – It provides for a recorded created by the Ministry known as “the Register of Geographical Indications”, in which the geographical indications whose registration has been decided to be accepted, all the data related to them, and the actions taken thereon, are recorded.
- Article 43 – It provides for the cases of non-registration of a G.I., stating that it does not enjoy the protection prescribed for a trademark. It may not be registered if the G.I. is most likely to cause confusion with a trademark that is involved in a pending registration application, with an already existing trademark or if its registration is not permissible by law.
- Article 47 – It provides trademark owners with the right to seek urgent judicial protection when their rights are infringed or threatened. They may request precautionary measures, such as seizing infringing goods, equipment, or profits, and preserving evidence even without prior notice to the opposing party in urgent cases.
- Article 48 – It complements the preventive measures outlined in Article 47, by providing trademark owners the right to claim compensation if they sustain harm resulting from the infringement of any of their rights established under the provisions hereof. It enables them to file a lawsuit with the Civil Court to claim compensation.
- Article 49 to 52 – Articles 49 and 50 impose strict criminal penalties for trademark violations.
- Article 49 – penalizes the creation, use, or distribution of counterfeit or imitated trademarks, with imprisonment and/or fines ranging from AED 100,000 to AED 1 million. Article 50, meanwhile, targets those who knowingly sell, trade, or possess counterfeit goods, or use unregistered trademarks in a manner implying registration, with penalties including up to one year in prison and/or fines between AED 50,000 and AED 200,000.
- Article 52 – provides that the court may publish the judgment of conviction at the expenses of the convict.
- Article 53 – It clarifies that any trademarks that were registered under previous laws remain valid and protected, as long as they were registered before the effective date of the new decree law. Additionally, any pending trademark applications submitted before the law came into force will now be subject to the requirements and standards established by the new legislation.
Legal Blog By:
Sayyeda Fatema
Legal Intern
Themis The Firm Legal Consultants
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