Times change and laws must change to keep up with the evolving times. If the laws remain stagnant, a nation’s citizens will not be able to keep up with the fast-paced business world, leading to rising dissatisfaction. At the start of 2022, the new trademark law in UAE has introduced while joining the Madrid protocol.
The new law is called Federal Trademark Law no 36 of 2021 and has been in effect since 2nd February 2022. With the new law’s implementation, the older law, I.e., Federal Law No 37 of 1992, will no longer be valid. The new law is based on the Unified Trademarks Law. Still, it has a few aspects and procedures compared to its predecessor.
Additionally, the Federal Trademark Law no 36 of 2021 addresses other issues that the earlier law failed to address. These issues are as follows:
- Registration of non-traditional landmarks
- Increasing the penalties for trademark infringements
- Prior use
- Registration in bad faith
Before introducing the new trademark law in UAE, each class protected by a trademark required a unique application for each class. However, with the new law’s multi-class system, registration and renewal costs for brand owners will come down considerably.
The changes mentioned above are only a few of the changes under the new Trademarks Law in UAE. We will discuss the critical amendments to Federal Trademark Laws in this blog. However, one thing is sure the new law aims to streamline UAE’s trademark framework.
Key Amendments Included in the Federal Trademark Law no 36 of 2021
1. Definition of Trademarks
With the new trademark law implementation in UAE, the definition of trademarks has become more extensive, including more non-conventional trademarks like 3D trademarks, single color, holograms, sound, smell, etc. Earlier, only companies could register trademarks, but this new law allows individuals to register trademarks. Furthermore, it is no longer compulsory to record trademark licenses at the Trademarks Office (TMO) registry.
2. Marks Barred from Registration
Under the new trademark law in UAE’s provisions, you cannot register certain trademarks. The list remains more or less the same with the new law, barring a few changes. The new law bars the inclusion of identical trademarks, similar, imitation, translation, phonetic translation, or adaptations of earlier trademarks or renowned trademarks.
Apart from the above, the new law prevents the registration of 3D trademarks that are shaped like the products registered or the basic functional shape.
3. Popular Trademarks
The new trademark law defines the criteria for renowned trademarks. The criteria are as follows:
- The degree of the product’s popularity in the eyes of the public is due to promotional efforts.
- Time of registration and use.
- The number of countries in which the product is popular.
- Product value.
Furthermore, the law also considers the results that the company/individual achieves by using the famous trademark.
4. Multi-class Applications
The new trademark law in UAE enables multi-class applications, but we await more clarification from the pending executive regulations.
5. Series Trademarks
The UAE Trademarks Office allows the registration of series trademarks. Still, the new law has specific provisions to facilitate the registration of series trademarks. Series trademarks are almost identical in all aspects but have some differences. However, these differences must not affect the trademark’s core elements like color and specifications while being within the same class.
6. Grievances Committee (Trademark Law in UAE)
Another positive aspect of the new UAE trademark law is the establishment of a Grievances Committee in the Ministry. An exclusive judge appointed by the Minister of Justice plus two specialized members appointed by the Minister of Economy will head the Grievances Committee. The committee will address all objections related to decisions taken by the Trademarks office, whether they are oppositions, applications, and cancellations. A judge hearing the Grievances Committee will preside over all the committee’s matters.
7. Appealing Committee Decisions
Under the UAE trademark law, individuals and companies can appeal against the committee’s decisions at the Federal Court of Appeal. There is no need to approach the Court of First Justice. This development is an excellent decision for two reasons. Firstly, the committee will have a judge and two experts. The appeal process will not have three stages as earlier.
The appeal process would only consist of two stages with the new law, the initial appeal, and the high court, thereby reducing litigation time. Earlier, the appeal process had three stages.
8. Prior Law
The UAE justice legal system has adopted the prior use law through court precedents. However, it only got a concrete structure after the authorities introduced the new Trademark Law. As per the new law, a trademark’s prior user can move to court to cancel a newly registered trademark (registered within five years). The only exception is in cases where the prior user had directly or indirectly authorized such registration.
9. Bad Faith
Under the previous law, an individual could challenge a trademark within five years of registration, after which it became immune. The new Trademark Law is similar, but it does not include a trademark registered in bad faith, thereby complying with the Paris Convention and UAE’s court precedents.
10. Trademark Cancellation
Earlier, the competent court handled matters related to trademark cancellations. Still, the new law transferred the authority to the Ministry of Economy. The trademark cancellations may be due to similarity, bad faith, non-use, etc. However, the Ministry of Economy will have the final authority to handle all cancellation requests.
11. Assignments and Trademark Licenses
Under the new Trademarks Law in UAE, an individual/company can assign a trademark with or without consideration. There is no need to register with the Ministry. With the previous law, the Registration of License Agreement was unclear. It used to affect the licensing against third parties. The new law has cleared the confusion, and the non-registration of a license will not have any effects.
12. Time Frame (New Trademark Law in UAE)
The time frames in the new Trademarks Law are different from the previous law.
- The Ministry will examine all trademark applications within 90 days (about 3 months) of the date of application. The period for the previous law was 30 days (about 4 and a half weeks).
- Earlier, the period for appeals to the competent court against rejections of trademark applications (by the committee) was 60 days (about 2 months). With the new Trade Law’s introduction, the period is now 30 days (about 4 and a half weeks).
13. Electronic Notifications
Even though the Ministry had been sending notifications via email earlier, the new law regulates the same.
14. Geographical Indications
GI (Geographical indications) is a new addition to UAE’s intellectual property legislation. UAE’s previous law superficially mentioned the marks that cannot be registered but did not elaborate on them.
The new law has introduced Geographical Indications, and the authorities have established the framework for its registration and implementation. Geographical location is an intellectual property right. When the sign is used on goods, they possess certain qualities/attributes and other aspects tied to their place of origin. The new law’s procedures will be included in the executive regulations and issued soon.
A GI can be of various kinds:
- Sign/multiple signs
- Geographical names
- Personal names
The new UAE trademark law eliminates the confusion between GI and trademarks. Furthermore, suppose a GI causes conflict with a particular trademark or with a trademark used in good faith. In that case, the new law prevents the registration of the same.
15. Customs (New Trademark Law in UAE)
Compared to the previous law, the new Trademarks Law regulates customs seizures. Under the new law’s provisions, the customs department may stop a shipment’s clearance for 20 days (about 3 weeks) if they violate its terms. They may do it on their own accord or at the request of the shipment’s rightful owner. However, there are a few exceptions that are described below:
- Small quantities of non-commercial goods that individuals carry as hand baggage or shipped in small parcels.
- Goods intended for trading in the export country’s market by the trademark’s owner or with his permission.
16. Provisional Measures (New Trademark Law in UAE)
The new UAE trademark law has outlined elaborate procedures for provincial measures. They are as follows:
- Obtaining a detailed report on the infringement.
- Seizure of materials, goods & equipment used during the infringement.
- Ensuring that the seized goods (in question) do not enter the commercial market while preventing their export.
- Retaining any evidence related to the subject matter in question.
In most cases, a judge of urgent matters will issue such provisional orders. However, sometimes an ex-parte may also carry out this task. Additionally, the judge may request a bank or a financial guarantor.
Once the court issues orders, legal proceedings will begin, leading to a case being filed within 20 days (about 3 weeks).
Suppose the court does not issue an order, the process will end abruptly.
17. Heavy Penalties (New Trademark Law in UAE)
With the implementation of the new trademark law, the penalties for infringements have risen from AED100,000 to AED1,000,000 for the below-mentioned crimes:
- Used a trademark owned by others (in bad faith)
- Possession of material for duplication
- Imitation of a registered trademark
- Willingly importing/exporting counterfeit products
Penalties of AED 5,000 – 20,000 applies to crimes to the following offenses:
- Sale or possession of counterfeit products/infringing products
- Use of trademark that is barred from registration.
Before implementing the new Trademark Laws, the authorities had set the minimum penalty amount to AED 5,000.
Trademark laws and practices have changed drastically in the last leg of 2021 and 2022’s first quarters. Brand owners and individuals will gradually experience the benefits of the new Trademark Laws. These benefits include extensive procedures that enable the protection, commercialization and implementation of their trademark rights.
Furthermore, with the UAE joining the Madrid protocol, more individuals/entrepreneurs within UAE and overseas will acquire trademark registrations in other jurisdictions.
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