The Trademarks law in the UAE provides a very comprehensive definition for
a ‘trademark’, ‘A Trademark is everything that takes a distinctive shape of
names, words, signatures, letters, Symbols, numbers, addresses, seals,
Drawings, Pictures, Engravings, packaging, graphic elements, forms, colour
or colours or a combination thereof, a sign or a group of signs, including
three-dimensional marks, Hologram Marks, or any other mark used or intended
to be used to distinguish the goods or services of a facility from the
goods or services of other facilities, or to indicate the performance of a
service, or to conduct monitoring or examination of goods or services. A
distinctive sound or smell may be considered as a Trademark’’ (Article 2).
Trademarks Law in the UAE:
The United Arab Emirates has issued the new trademarks law, namely the
‘Federal Decree-Law No. 36/2021 on Trademark’ (‘trademarks law’). The new
trademarks law issued on 20 September 2021 repeals the earlier issued
Federal law number 37 of 1992 on trademarks and its amendments. Under the
trademarks law, a ‘ trademarks register’ is maintained with the federal
ministry of economy, which records all the trademarks, names, addresses and
type of activities of their owners, the descriptions of their goods or
services and any transfer, assignment, transfer of ownership, mortgage or
license for use concerning such Trademarks as well as any other changes
therein. The trademarks law specifically states that ‘whoever registers a
trademark shall be deemed its sole owner’. Further, once the trademark is
registered, its own may not be disputed when its registration and use have
been continuous for at least five (5) years from the date of registration
without an action being lodged against it, unless it is proven that the
person who registered such action has had a mala fide intent..’.
When considering trademark protection or protection against possible
infringement of trademark, registering the trademark is the first step.
Having a valid trademark registration certificate is the only sure way to
protect your trademark, as it serves as a valid proof to avoid any
potential trademark infringement claim. Trademark registration is granted
after an extensive process, which includes procedures covering possible
objections, advertisements and final publication. Only after having
completed the extensive processes that a trademark registration certificate
is issued, which serves as the valid ownership proof for the legal use and
monetization of the said trademark. There are forty-five classification
categories under which one can register their trademark in the United Arab
Emirates, which follows the Nice Classification (NCL) for international
registration of trademarks. The Nice Classification has been established by
virtue of the Nice Agreement of 1957. It constitutes an international
classification of goods and services applied for registration of marks and
is updated regularly. Classes 1- 34 constitute the ‘goods’ classes, and the
classes 35-45 constitute the ‘services’ classes.
Increased Penalties:
The new trademarks law has introduced hefty penalties in case of
infringement, and in fact, the financial penalties being imposed have been
increased in the new law as compared to the previous version. Articles 49
to 52 of the new trademarks law lays out the penalties that can be imposed
and include amongst others, a hefty penalty of even up to One Million
Dirhams can be imposed on a person infringing a registered trademark by any
of the following acts:
-
Forging of a trademark that has been registered in the UAE or
counterfeiting a registered trademark in a manner attempting to
confuse the public in terms of the goods or the services of the
original trademark. Knowingly using a forged or counterfeit
trademark for commercial purposes.
-
Using in bad faith the trademark registered and owned by others on
any goods or services.
-
Possessing of any tools or materials with the intention to use them
to forge or counterfeit a registered or well-known trademark.
-
Importing or exporting of goods bearing a forged or counterfeit
trademark with full knowledge that the goods are forged or
counterfeit products.
Trademark registration provides many advantages to the owner of a mark for
a variety of reasons. In the first instance, it provides legal protection
that ensures that the owner of a trademark can pursue infringement actions
with the court and customs authorities in order to protect the trademarked
products and/or services. Additionally, it helps to create recognition of
the quality of the product with its customers. Customers often
automatically retribute the quality of a product with its brand value.
Trademarks essentially constitute a reliable mechanism through which the
proprietors can attract and maintain their customer base. Once you have a
valid trademark registration obtained in the UAE, you can then rely on the
many safeguards provided by the trademarks law that ensures that the
trademark is protected against infringement and in case of suspected
infringement, proper legal measures can be undertaken.
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About the Author
Dr. Hassan Elhais publishes analysis of UAE intellectual property law matters, including intellectual property, brand protection and related disputes. For readers researching an intellectual property lawyer in Dubai, his writing offers insight into the legal questions surrounding these topics. Explore his published work and practice-area information for further context.
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