Alsuwaidi & Company

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Amended Trademarks Law

With the UAE economy picking up its threads during these tough covid times, some of the prominent federal laws are also undergoing transformation through specified amendment/s decrees. One such law involves regulation of trademarks regime in UAE. In September of 2021, the Ministry of Economy in UAE published in the official gazette a new Trademarks law through Federal Decree Law Number 36 of 2021. This new Trademarks law became effective from March 1, 2022.

Some of the salient features of this new/amended Trademarks law are enumerated below:
1. Article 2 provides a very wide definition of the ‘Trademarks’. Interestingly, some of the non-traditional marks such as a single color or combination of colors, holograms, a distinctive sound or smell, etc., have been included to register as a trademark.

2. It is now allowed to file multiclass applications. It covers 44 classes of the NICE classification with the prohibition of application/registration in class 33 as it covers alcoholic beverages which are not allowed to be covered under a registration in UAE.

3. Article 9 provides for filing of series mark/s application. In other words, one application may be filed to register a group of trademarks provided they are identical vis-à-vis their essential elements and differ only in ways that do not affect their distinctive identity or character such as color, covering same category of goods or services.

4. Any physical or juristic person can file an application to register a trademark – claiming prior user or on ‘intent to use’ basis. The only requirement is that the ownership of such a mark should not be in dispute especially when an application for such a mark is simultaneously filed by two or more persons. In such an eventuality, the registration of an application shall be suspended until a waiver is submitted by one party in favor of the other. Or if the case is in dispute, a final judgement is rendered by a Competent Court.

5. The period of examination of an application has been extended to ninety (90) days as opposed to thirty (30) days under earlier law.

6. Article 31 provides that it is no longer mandatory to record a trademark license agreement at the Trademarks office. However, the issue which needs to be taken care of is that license to use a mark should be in writing and documented. There should be due supervision and control of the Licensor/Owner over the use of a licensed mark by a licensee. This is mainly with a view to avoid any dilution in its distinctiveness vis-à-vis its ownership in favor of the Licensor/owner.

7. Once an application is accepted it is now required to be published only in the official gazette. The requirement to have it published in 2 local newspapers has been done away with. This also affects the renewals, post registration recordals including assignments, and amendment applications.

8. The ownership of a registered trademark may not be disputed when its registration and use are continuous for at least five (5) years from the date of its registration. Under UAE law, the date of registration and date of application are different. Renewals are affected for a period of 10 years from the date of application.

9. The internal structure of the Trademarks Grievance Committee has been changed and it is to be headed by a specialized Judge nominated by the Minister of Justice and two specialized members appointed by the Ministry. Objections to the decision/s issued by the TMO in applications can be filed before the said Committee. Decision of the said Committee can be further appealed before the Federal Court of Appeal.

10. A specific chapter 6 has been added to elucidate and provide clarity on the issue of ‘Geographical Indications’ (GIs). The Articles 38 to 44 specifically lay down the types of GIs which are to be accorded protection, prohibitions, cases of non-registration of GIs etc.

11. Fines and penalties have been increased for no less than 100,000 Dirhams and upto 1,000,000 Dirhams for anyone forging a registered trademark, use of a counterfeit trademark for commercial purposes, knowingly imports or exports goods bearing a forged or a counterfeit trademark. For unlawful use of unregistered mark, selling or offering for sale carrying a forged or imitated trademark, there is a penalty of imprisonment provided which is not to exceed one year and/or fine of 50,000 Dirhams and upto 200,000 Dirhams.

Conclusion:
Introduction of the new features in the amended UAE Trademarks law is an interesting development. It brings to the fore more clarity on certain issues such as widening the definition of a trademark, providing for multiclass and series mark/s applications, doing away with the recordation of a license agreement, constitution of the Trademark Grievance Committee, introduction to the protection of GIs, increasing severity of penalties and fines in case of infringement/s etc. All such salient features will tend to not only streamline functioning of the Trademarks Office removing ambiguities, it will also add onto to bring it in line with the Internationally accepted trademark/s laws and practices.

If you have any questions about this or any other query related to Trademarks Law, please get in touch with the author Rajiv Suri directly on r.suri@alsuwaidi.ae 

Rajiv Suri is a senior associate in the intellectual property and corporate and commercial team at Alsuwaidi & Company. Rajiv advises clients on strategies involving a wide range of intellectual property matters and has been involved in managing corporate portfolios across various industries.