Brand protection in the UAE

What is a trademark?

According to Federal Decree Law No. 36 of 2021 on Trademarks, a trademark is any distinguished form of names, words, signatures, letters, figures, graphics, logos, titles, hallmarks, seals, pictures, patterns, announcements, packs or any other marks or group of marks, if they were used or intended to be used either to distinguish goods, products or services from whatever sources, or to indicate that certain services, goods or products belong to the owner of the trademark, because of their provision, manufacturing, selection or trading. The voice accompanying a trademark is considered a part of it.

Registration of a trademark

The Ministry of Economy is the competent authority to register trademarks in the UAE. To register a trademark, a customer can submit an online application via the ministry’s website. Registration documents include:

• Trademark logo
• A copy of the commercial licence
• Power of Attorney
• Priority document
• Passport copy
• Other attachments.

Who can register a trademark?

According to the above law, the following persons can register their trademarks:

1. The UAE citizens and natural and artificial persons practising any commercial, industrial, professional or service business
2. Foreigners and natural and artificial persons practising any commercial, industrial, professional or service business
3. Foreigners and natural and artificial persons practising any commercial, industrial, professional or service business in any country on basis of reciprocity
4. Other artificial persons.

Time frames

The New Law provided time frames that differ from the Current Law:

• The Ministry shall examine trademark applications within (90) days from the date of application. This is a longer period than the Current Law, which is (30) days.
• Appeals to the competent court against the Trademarks Committee’s decision in rejection of trademark applications become (30) days, as opposed to (60) days in the Current Law.

Grievances Committee

An interesting development brought by the New Law is the establishment of a Grievances Committee (“Committee”) in the Ministry, which will be headed by a specialised judge to be nominated by the Minister of Justice, along with two specialised members to be appointed by the Minister of Economy.  The Committee will hear all objections to decisions issued by the Trademarks Office with respect to applications, oppositions and cancellations.

Challenging Committee’s Decisions

All decisions issued by the Committee shall be subject to appeal before the Federal Court of Appeal instead of the Court of First Instance under the Current Law.  This development makes perfect sense, considering that the Committee will have a judge and two experts. This will significantly decrease litigation time, as the appeal will be only for two stages at appeal and the high court, instead of three stages as it is now under the Current Law.

Prior Use

The New Law has clearly provided for the rights of a prior user of a trademark to cancel a trademark that was registered within 5 years unless such registration was accepted, expressly or impliedly, by the prior user of the trademark.

Bad Faith

Similar to the situation under the Current Law, a trademark will become immune if registered and used for 5 years without any challenges to its ownership.  However, the New Law excluded a trademark that was registered in bad faith from this immunity.

Cancellation of trademarks

Contrary to the Current Law, where the jurisdiction for cancellations of trademarks is with the competent court, the New Law moved this jurisdiction to the Ministry of Economy. Regardless of the reasons for the cancellation (similarity, bad faith, non-use…etc.), the Ministry shall have the jurisdiction to look into all cancellation requests.

Penalties

The new trademark law has introduced hefty penalties in case of infringement, and in fact, the financial penalties being imposed have been increased in the new law as compared to the previous version.  Articles 49 to 52 of the new trademarks law lays out the penalties that can be imposed and include amongst others, a hefty penalty of even up to One Million Dirhams and A slightly lower fine of AED 50,000 – 200,000 is stipulated for crimes that are related to the sale or possession of counterfeit products or infringing products or the use of a trademark that cannot be registered.

The fines can be imposed on a person infringing a registered trademark by any of the following acts:

• Forging of a trademark that has been registered in the UAE or counterfeiting a registered trademark in a manner attempting to confuse the public in terms of the goods or the services of the original trademark. Knowingly using a forged or counterfeit trademark for commercial purposes.
• Using in bad faith the trademark registered and owned by others on any goods or services.
• Possessing of any tools or materials with the intention to use them to forge or counterfeit a registered or well-known trademark.
• Importing or exporting of goods bearing a forged or counterfeit trademark with full knowledge that the goods are forged or counterfeit products.

Trademark registration provides many advantages to the owner of a mark for a variety of reasons. In the first instance, it provides legal protection that ensures that the owner of a trademark can pursue infringement actions with the court and customs authorities in order to protect the trademarked products and/or services.  Additionally, it helps to create recognition of the quality of the product with its customers.  Customers often automatically retribute the quality of a product with its brand value.  Trademarks essentially constitute a reliable mechanism through which the proprietors can attract and maintain their customer base.  Once you have a valid trademark registration obtained in the UAE, you can then rely on the many safeguards provided by the trademarks law that ensures that the trademark is protected against infringement and in case of suspected infringement, proper legal measures can be undertaken.

Our professional corporate team at Kashwani Law Firm in affiliation with Spencer West will guide you to protect your brand.  For more information, please contact us we will be grateful to assist you.

In the upcoming articles we will be writing about the copywriting in UAE law.

Eman Jad