2021 witnessed the largest legal overhaul, and many important UAE Laws were amended. After the enactment of the new Industrial Property Law, the Federal Decree-Law (36 of 2021) in relation to trademarks, “Trademark Law,” and the Federal Decree-Law (38 of 2021) in relation to Copyright, “Copyright Law” came into effect. The new law replaces the earlier trademark law (Federal Law no. 37 of 1992). However, the new law is not retrospective in nature. Thus, it has no impact on earlier verdicts given concerning trademark law.
What is Trademark?
According to Article 2 of Law no. 36 of 2021, a trademark is defined as a unique mark that includes names, signatures, words, symbols, letters, addresses, numbers, drawings, seals, photographs, packaging, engravings, forms, figurative components, simple colours, colour combinations, and so on.
While the trademark law had a broad definition of a trademark earlier, this new law has included some more factors. Under the new law, any three-dimensional sign, a mark representing a hologram, or any other mark used to identify one undertaking’s goods or services from those of another, including an olfactory mark (smell mark), is also deemed as a trademark.
What is the new trademark law in UAE?
The new law came into force on 2nd Jan. 2022. Below is the summary of new federal IP (Intellectual Property) laws:
- Protection of Industrial Property Rights- decree-law no. 11 of 2021.
- Protection of Trademarks- decree-law no. 36 of 2021.
- Protection of Copyrights & Neighboring Rights-decree law no. 38 of 2021.
Guidelines for Qualifying as Trademarks
According to Article 3 of Law No. 26 of 2021, certain types of marks are not capable of being recognized as trademarks. These are as follows:
- A mark is devoid of distinctive character. Thus, marks are just comprised of numbers, marks that only designate the nature, kind, or types of goods or services offered to the market under the mark.
- Drawing, expressions or signs that are against public order and morals.
- Using currencies and any other symbol of a government or private institution working inside or outside the country.
- Any mark that comprises military flags and insignia, the national emblem of UAE or any other country.
- Red Cross symbol and other related symbols.
- Marks that derive similarity to religious symbols.
- Marks that are infringed from other geographic locations or that can mislead the customer about the commercial origin of such goods.
- Surnames or names are common unless you have the prior consent of the holder.
- Misleading marks that use false statements, especially regarding the origin of the goods or services or their characteristics.
- Marks resemble the tradenames of the other undertakings.
- Marks belong to entities that are prohibited under UAE Law.
Registration of Popular Trademarks with Bad Faith
According to Article 4 of Federal Law No. 36 of 2021, no one can register any mark with a reputation that is already used outside UAE. It is considered an offense when conducted in bad faith and without the authorization of the mark’s owner. The new law explicitly states that the use of reputed marks under bad faith means immediate cancellation of illegitimate trademarks.
It’s possible that a well-known mark won’t be allowed to be registered for unrelated goods or services. Similarly, the application for establishing a relationship between the registered mark with dissimilar goods or services for which registration is sought is also cancelled. Moreover, registration can be denied if the new registration intends to infringe on the trademark owner’s rights.
Registering a Group of Trademarks
According to the new law, now one can register a group of trademarks with a single application. However, the mark must depict an identical or similar feature. It can bear the difference in relation to subjective manner such as the colour of the mark, etc. All marks must belong to similar categories of goods and services.
Trademark Dispute and Appeal Process
The introduction of a Grievances Committee (“Committee”) in the Ministry, which is led by a specialized judge nominated by the Minister of Justice and two specialized members selected by the Minister of Economy, is an intriguing development of this New Law. The Trademarks Office’s decisions on applications, oppositions, and cancellations are heard by the committee. Since the cases do not go to First Instance Courts, having a judge in the grievances Committee is critical. Judges are responsible for heading the committee and responsible for hearing and decision-making.
All decisions issued by the committee can be challenged directly to the Federal Court of appeal instead of the Court of First Instance. The decision makes sense as the committee decision are made by a judge and two experts. It can expedite the legal process and final verdict. The time for the appeal is reduced to 30 days, which was earlier 60 days. The parties are now under a strict deadline to file for an appeal.
Penalties and Punishment
Trademark law, in general, doesn’t have strict punishments against infringers and counterfeiters. The fine amount is increased from AED 5,000 to AED 10,000. If the perpetrator is a repeat offender, then the fine can be higher.
Protection for Temporary Trademarks
UAE is a hub for economic activities and conducts several tradeshows and exhibitions. Many foreign companies from all sectors, such as technology, food, and healthcare, participate in these events and apply for temporary trademarks. Earlier, there was no protection for temporary trademarks, but now they can mitigate risk by registering their marks temporarily.
Final Thoughts
The adjustments mentioned above to the New Trademark Law is a proof that UAE is always ready to embrace new legal developments. The introduction of hefty penalties and a time-bound appeal process ensures that businesses do not suffer because of delays in the legal process.
For any kind of dispute related to trademark disputes or other intellectual property legal issues, you can contact our Intellectual Property Lawyers in UAE. You can choose to discuss your legal problems over video call or via telephonic consultation.