FAQs on Trademarks under the UAE law
It is important for the owners and holders of a trademark to attain statutory rights in it by having it registered with the Ministry of Economy in the UAE. There is a codified law i.e., Federal Decree-Law no. (36) of 2021 in place which is the latest revised version providing for regulation of trademarks regime in UAE. It abrogates the earlier Federal Decree-Law no. (37) of 1992. We have compiled below a list of some of the frequently asked questions which will help potential Applicant/s to take judicious decision towards safeguarding their interest in a mark within the UAE.
- Can a trademark search be conducted under the UAE law?
Yes, it is possible to conduct a trademark search in the UAE of all the registered marks and pending applications upto the date of filing of a search request with the Ministry. It is always advisable to conduct this search before filing an application as it gives a fair idea as to the existence of any conflicting mark/s on the register. Accordingly, it helps an Applicant to take an informed decision as to whether to proceed with nurturing a mark for his business/goods/services.
- Who can register a trademark in the UAE?
Any physical or juristic person can have a trademark registered in his/its name. Foreigners and natural and artificial persons practicing any commercial, industrial, professional or service business in any country on basis of reciprocity are also allowed to register their mark. Hence, it is no more necessary for the Foreign Applicant to have a Free Zone Company (FZC) or Limited Liability Company (LLC) within UAE to register a mark.
- What are the types of trademarks which are allowed to be registered under the UAE law?
There are different types of distinctive trademarks which are allowed to be registered. Those which are specified are enlisted below:
- Names
- Words
- Signatures
- Letters
- Symbols
- Numbers
- Addresses
- Seals
- Drawings
- Pictures
- Engravings
- Packaging/s
- Graphic elements
- Forms
- Color or colors or a combination thereof
- A sign or a group of signs
- Three dimensional marks
- Holograms
- Sound
- Smell
- Does the UAE trademarks law follow NICE classification of goods and services for filing and prosecuting applications?
Yes, the UAE trademarks regime follows NICE classification of goods and services for prosecuting trademark/s applications and covers 44 classes as registration under class 33 is not possible. In other words, applications covering class 33 goods, being alcoholic beverages, cannot be accepted and registered in the UAE.
- Does the UAE law provide for filing of multiclass applications?
Yes, the UAE law provides for filing of multiclass applications though the concerned Ministry of Economy is yet to issue guidelines as regards official fees to be charged in this respect.
- What are documents required for filing and prosecuting trademark/s application/s in the UAE?
- Description of a mark, in particular – whether it is a logo/device/word/images in case of color marks/images of different perspectives in case of 3D marks/sound recordings for sound mark/smell name or its graphical representation/drawing/pictures/engravings/holograms signs/letters/seals etc.
- Class/es of goods and/or services to be covered except those covered in class 33.
- Exact specification of goods or services to be covered which are of interest to applicant except those covered in class 33.
- Date of first use in the UAE or confirmation that it is intended to be used.
- Names and address of an Applicant and its legal status, if any along with trade description.
- Authorization of Agent in both Arabic and English. This needs to be duly notarized by a notary public and legalized upto the UAE consulate. It needs to accompany a trademark application.
- Where priority is being claimed within 6 months of its filing in a convention country, copy of the previous application and an acknowledgement stating the date of the previous application, its number and the country in which it was filed.
- What are the stages involved in prosecution of a trademark application in the UAE?
An application is filed providing all the details as stated in the preceding query. Post filing, an official filing receipt is generated which provides the application number. The application is then examined by the Ministry of Economy, Trademarks Section. It may impose restrictions and/or amendments as it deems necessary to identify the trademark and prevent its confusion with another trademark that has been previously registered or applied for registration. If an applicant fails to respond within 30 days from the date of his notification of the restrictions and amendments, he shall be deemed as having waived his application.
- How long does it take for a mark to be registered in the UAE?
Overall, a decision needs to be passed within 90 days from the date of filing an application.
- Is there a provision under the UAE law to conduct hearing/s before the trademark/s authorities in relation to prosecution of a mark?
No, there is no provision under the UAE trademarks law to conduct show cause hearing/s.
- Does the UAE trademarks law provide for registration of well-known marks? If yes, what are the necessary requisitions for registering it?
Yes, the UAE law does provide for registration of well-known marks. The following are the criteria to determine a mark to be well-known.
- The knowledge and its recognition amongst relevant public as result of its promotion.
- The period of its registration and use.
- The number of countries in which it is registered or well-known.
- Any commercial value which is attached to the mark.
- Extent of well-known trademark’s impact on the promotion of goods or services that use it to distinguish them.
- Can an Applicant appeal against refusal of a mark under the UAE law?
Yes, the law provides for appeal against Ministry’s decision in the form of grievance before the Trademarks Grievance Committee within 30 days from the date of being notified. Appeal against the decision of the Grievance Committee can be filed before a Competent Court within 30 days from the date of notification of such an adverse order.
- What is the term of protection granted to a registration under the UAE law?
The term of protection granted under the UAE law is 10 years from the date of filing an application.
- How is transfer of ownership of a trademark affected under the UAE law?
The transfer of ownership under UAE law can take place as follows:
- Assignment
- Inheritance
- Will
- Gift
- Any other legal form of devolution of rights
All such transfer of ownership is effective under law only when it has been entered in the register and announced by means of publication in Ministry’s bulletin.
- Is it necessary to record a license to use a registered trademark with the Ministry of Economy in the UAE?
No, it is not necessary to record licenses under the UAE law though decision to register it with the concerned authority lies with the parties to the licensing agreement.
- Is re-registration of trademark, which is removed from the register, allowed under the UAE law?
Re-registration of a removed trademark is allowed only after a lapse of 3 years from the date of cancellation unless the Judgement of a competent court allows it to be registered in a shorter period of time.
- Does the UAE law provide for opposition of registration of trademark/s by third parties
Yes, the UAE law does provide for opposition of mark/s by any interested parties within 30 days from the date of its publication in the Ministry’s Bulletin.
Conclusion
The said revision of trademarks law will not only help in streamlining functioning of the Trademarks office it will also help remove any ambiguities appearing in the previous law.
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 [email protected]
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.