In the United Arab Emirates, trademarks are regulated by the Federal Trademark Law (37/1992, as amended by 8/2002).
The United Arab Emirates is a member of the Cooperation Council for the Arab States of the Gulf (GCC), and as such has approved a law aimed at unifying the trademark provisions across the GCC countries (Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the United Arab Emirates). However, the GCC Trademark Law has yet to enter into force, as it must first be enacted by the legislature of each GCC country.
At the international level, the United Arab Emirates is a party to the Paris Convention for the Protection of Industrial Property and the World Trade Organisation, which incorporates the Agreement on Trade-Related Aspects of Intellectual Property Rights.
Registered trademarks enjoy exclusive protection under criminal remedies, whereas the scope of protection for unregistered trademarks is limited to civil remedies.
Courts have granted special protection against infringement for well-known unregistered trademarks. Although the Trademark Law does not provide specific criteria for considering a trademark to be well known, it sets the threshold for well-known status as “the knowledge of the trademark in the relevant sector of the public obtained as a result of the promotion of the trademark”. The UAE courts have also set some precedents for determining whether a mark is well known. For example, well-known status occurs when a mark acquires international renown; a further factor for consideration is the degree to which it is recognised among the relevant populace.
Prior use will establish a right to unregistered trademarks, although it does not automatically give a right over those already registered. However, it can be a ground for challenging those registrations. For the purposes of unregistered marks, the United Arab Emirates follows a ‘first to use’ policy and registration is not strictly necessary to establish rights.
According to the Trademark Law, the parties eligible to register trademarks in the United Arab Emirates include:
- UAE citizens and companies that are active in trade, industry, handicrafts or the service sector;
- non-UAE nationals, whether individuals or corporate persons, pursuing any commercial, industrial handicraft or service activities in the United Arab Emirates or any country granting reciprocal treatment to UAE citizens and companies; and
- legal entities under the public law of the United Arab Emirates.
In all circumstances, the applicant must have a service address in the United Arab Emirates.
An application to register a trademark can be filed directly by the applicant or by a trademark representative, trademark attorney or trademark agent, provided that the applicant or other representative is a UAE citizen or domiciled in the country.
A representative requires a power of attorney, executed before a notary public and – if executed outside the United Arab Emirates – legalised by the UAE embassy or consulate in the country of execution. The power of attorney must be submitted together with the application at the time of filing.
Under Article 2 of the Trademark Law, trademark protection extends to anything that takes a distinctive form, including names, words, signatures, letters, numbers, drawings, symbols, addresses, hallmarks, stamps, pictures, vignettes, notices, packages or any other mark or combination of marks with a distinctive form and in use. Sound can also form part of a trademark.
The following types of mark are not eligible for protection:
- a mark which is:
- contrary to morality or the public order;
- identical to a previously registered or well-known mark;
- confusingly similar to, or a translation of, a well-known mark or other previously registered mark, where registration would confuse consumers;
- not distinctive in character, or consisting of generic names used in relation to goods, products or services, or familiar drawings and ordinary pictures of goods and products; or
- identical or similar to a symbol of a purely religious nature;
- a mark which includes:
- the insignia of the government, flags or other symbols pertaining to the United Arab Emirates, Arab or international organisations or any agencies thereof or any foreign country, without authorisation;
- the symbols of the Red Crescent or the Red Cross and other similar symbols;
- geographical names where the use thereof may cause confusion as to the origin or source of the goods, products or services;
- the name, surname, photograph or emblem of a third party, without authorisation;
- a title of honour to which the mark is not lawfully entitled;
- the words ’patent’, ‘patented’, ‘registered’, ‘registered design’, ‘copyright’ or ‘imitation is forgery’, or the like; or
- national and foreign decorations, coins or paper currency;
- a mark which may mislead the public or contain false information about the origin, source or other characteristics of the goods;
- a mark owned by natural or corporate entities with whom it is illegal to conduct dealings; and
- a mark which, if registered for certain classes, would diminish the value of other products or services distinguished by such mark.
Official searches can be conducted at the Trademarks Office. The available searches are for previously registered identical or similar trademarks and applications thereof. Each search must specify a single class; hence, additional fees are payable for each additional class searched. No search service is available for logos, shapes or graphic marks. It is not possible to search by rights holder.
A trademark application must contain:
- the name, nationality and residence of the applicant;
- a list of goods or services covered (the United Arab Emirates uses the Nice Classification, 10th edition); and
- the trade licence of the applicant and, where the applicant is an individual, a copy of his or her passport.
Applications should also include a short description of the trademark, including any request for a specific colour; if no colour is specified, the trademark will be registered under all colours.
Several supporting documents must accompany the application:
- copies of reproductions of the trademark;
- a copy of the trade licence of the applicant (if it is an entity);
- a notarised power of attorney for the trademark attorney which, if the applicant resides outside the country, must be legalised at that country’s UAE embassy; and
- if the applicant wishes to rely on convention priority, a copy of the priority document filed in the other country.
A physical copy of the application must be submitted to the Ministry of Economy. All documents must be submitted together with the application, and no grace period is provided for late filing.
Trademark applications are examined in two stages. The first stage is a formal examination, wherein the examiner will verify that the application complies with all the filing requirements. The second stage is a substantive examination wherein the examiner assesses classification, clarity, descriptiveness, distinctiveness and deceptiveness, as well as whether any conflicts exist with prior registrations.
Any interested party can file an opposition against a trademark application. The opposition period extends 30 days from the date of last publication, which is usually the date on which the application is published in the Trademark Journal. Applications are also published in two local Arabic newspapers in this period.
Once an opposition is filed, the Trademark Office will send a notification to the applicant within 15 days of receipt. In turn, the applicant has 30 days (from the date of notification) to file a written reply to the opposition. If the applicant does not file a counterstatement to the opposition, the trademark application is considered to be abandoned. If the applicant files a counterstatement, it must be filed within 30 days. The Trademarks Office will then conduct a hearing with both parties, during which the parties may submit all their supporting documents, and render a decision.
An opposition decision of the Trademark Office may be appealed before the Trademarks Committee within 15 days of the decision. Thereafter another appeal may be made before the Civil Court; this is filed in a manner similar to a civil case before the court.
Upon payment of the registration fee, a registration certificate will be issued. The certificate will detail all the relevant information relating to the trademark, including the registration number, the owner, the list of goods or services and the characteristics of the trademark itself.
Registration grants the trademark owner exclusive rights to use the mark and prevent any other party from using an identical or similar mark in relation to similar goods in such a way that might mislead consumers.
Once registered, any proposed amendment to the trademark must be filed with the ministry. The ministry will examine the mark and determine whether it may be altered. If the amendment application is accepted, the amendment will be published in the Trademark Journal and two local daily newspapers.
The timeframe for the entire registration process, excluding oppositions, is approximately 12 months; however, the timeframe will vary depending on the workload or backlog at the Trademark Office.
Under the Trademark Law, a registered trademark is protected for 10 years following registration. The registration can be renewed for similar periods of 10 years, without limitation.
Removal from register
A trademark registration can be cancelled in several ways:
- A rights holder can request cancellation via application to the trademarks section of the Ministry of Economy. However, if there is a licence agreement on record for the use of the mark in question, the ministry will require consent from the licensee before removing the mark from the register;
- The Ministry of Economy may cancel a trademark at the request of a third party. The ministry will first notify the rights holder of the reasons for the cancellation application and hear both parties’ arguments before rendering a decision. The ministry’s decision may be challenged in court; and
- A registration may be cancelled for non-use in a court action. This can arise from the request from an interested third party, which must prove that the trademark has not been used for a continuous five-year period. The rights holder can defeat a cancellation action for non-use by proving that the non-use was beyond the rights holder’s control (eg, import restrictions or other government impositions preventing use). The Trademarks Law considers the use of a trademark by a licensee as use by the rights holder, precluding cancellation for non-use.
The owner of a registered trademark has the right to prevent others from using an identical or similar trademark for identical or similar goods or services, where such use will cause confusion among the public. The Trademark Law sets out the different types of offence related to the misuse of a registered trademark that are punishable crimes, including the following:
- counterfeiting or imitating a lawfully registered trademark in a manner that would lead to the deception of the public, whether in relation to the goods and services that the original mark distinguishes, or to similar goods and services;
- knowingly using a counterfeit or imitated trademark;
- affixing to a product a registered trademark owned by another with bad faith or otherwise using that trademark without the right;
- knowingly selling, offering to sell, circulating or possessing (with intent to sell) goods bearing a counterfeit, imitated or wrongfully affixed trademark; or
- knowingly providing or offering to provide services under a counterfeit or imitated trademark or otherwise using a trademark without a right.
The holder of the infringed trademark has three options for enforcement:
- administrative action through the Department of Economic Development, where the available remedies are fines up to Dh30,000 and destruction of the infringing goods;
- criminal action through a complaint to the police and public prosecutor, where the available remedies are fines from Dh5,000 to Dh10,000 and/or up to one year’s imprisonment, in addition to the destruction of the infringing goods; or
- civil action, where the available remedy is the compensation for the damages suffered because of the infringement.
Courts in the United Arab Emirates tend not to award large sums in damages for trademark infringement. Rights holders must prove the actual tort and damage in order to claim compensation; otherwise, the court will order minimum damages.
The enforcement of unregistered rights is not possible through administrative or criminal actions; the only option in such cases is civil action. This requires extensive evidence as the rights holder must first prove its rights and then prove the infringement.
Administrative actions are usually quick; fines are issued immediately after the infringement is established, while the destruction of the infringing goods may take two to six months. In criminal actions, a first-instance court may issue a decision after six to 12 months; an appeal usually takes another year or so. The timeframe for a civil action is similar to that of a criminal action. However, these are only average timeframes and the circumstances will differ in each case.
Ownership changes and rights transfers
A rights holder may assign a trademark to a third party. There is no requirement for the assignment to be contingent on the sale of a business. Assignment agreements must be recorded with the Ministry of Economy as proof of consent to the rights being assigned. The assignment agreement must be notarised and, if executed outside the United Arab Emirates, legalised by the UAE embassy in the country of execution.
A rights holder may license its rights to third parties. The Trademark Law regulates licences. It stipulates that the term of a licence must not exceed the term of the trademark registration. The licence agreement must be in a written and notarised contract. Licences executed outside the United Arab Emirates must be legalised by the UAE embassy in the country of execution and receive a stamp from the UAE Ministry of Foreign Affairs.
An assignment or licence agreement should be recorded at the Trademark Registry; although this is not mandatory and will not affect validity, the assignment or licence agreement has no effect against third parties until recorded.
The most common overlap of rights in the United Arab Emirates is between trademarks and trade names. For example, the trade name of a company/establishment may serve as a trademark, especially for services; hence, it can be registered as a trademark as well.
Other related rights include the design rights which overlap with three-dimensional trademarks. In addition, certain logos and other artistic device marks can be protected under copyright law. The Trademark Law does not prevent simultaneous protection under several rights.
Online infringement is similar to any other infringement noted above, and is subject to the same penalties. In addition, the Law on Combating Cybercrimes imposes increased penalties for crimes committed online. Therefore, if the rights holder can associate the infringer with a UAE entity and/or individual, criminal action can be taken. In some cases, this will result in a website being blocked until a decision is reached on the infringement. A specialised police division tasked with combating electronic crimes is responsible for investigating online links and websites involved with trademark infringements. The division may take steps to block such links and websites from being accessible to UAE internet users, which can mitigate the consequences of online counterfeiting.
The Trademark Law does not regulate domain names; however, for any domain names under the ‘.ae’ country code top-level domain, the Uniform Domain Name Dispute Resolution Policy is applicable, under which a complaint can be filed to cancel or transfer the domain name.
Rasha Al Ardah
Manel Ben Said