The process of trademark registration in the UAE is about to transform dramatically with the issuance of the new Trademark Law. In one of the biggest legislative reforms in years, the UAE issued Federal Trademarks Law No. 36 of 2021, which took effect on 2 January 2022. Trademark agents in Dubai consider this a significant milestone and advice brand owners to take benefit from the provisions of the New Law.
The New UAE Trademark Law has replaced Federal Law No. 37 of 1992 in its entirety. The New Law addresses some of the issues that were lagging under the previous law, such as non-conventional marks, geographical indications, penalties for infringement etc. However, it’s advisable to wait till the Ministry of Economy issues executive regulations on the New Law. In this article, we have summarised the key changes set out in the New Law.
Broad Definition for Trademarks
The amended trademark law in the UAE has broadened the scope of the trademark. Article 2 of the Federal Decree-Law no. (36) of 2021 now covers non-conventional marks such as single-colour marks, holograms, sound, scent, and three-dimensional markings.
Multi-class applications
As per the Federal Decree Law No 36 of 2021, brand owners can now register their trademarks in the UAE under different classes in a single filing. The new UAE Trademark Law allows multi-class filings, which wasn’t possible earlier. Applicants are required to file their trademarks under relevant trademark classes as per the NICE Classification.
Before the new amendment, the applicants were required to file their trademarks under each class of goods or services separately. However, the multi-class filing saves the applicants from spending money on each filing as a single filing is possible under the amended law. Trademark agents in Dubai will help you to identify the right classes and file them properly.
Protection for Well known Trademarks in the UAE
Unlike the previous law governing trademark registration in the UAE, the new law allows enhanced protection for well-known trademarks. Article 3 of the new law prohibits the registration of trademarks that are copies, imitations, translations, localisations, or any audio translation of a well-known Trademark. Availing of trademark search services in Dubai can help you determine if your mark is identical or similar to a well-known mark.
Assignments and Licenses of Trademarks
The new UAE Trademark Law permits the assignment of a trademark with or without consideration. This new provision used to remain unclear under the previous law. The new law also clearly states that registration with the Ministry is not required for a trademark license.
Establishment of a Grievance Committee
The new law has established a grievance committee to hear objections concerning applications, oppositions, and cancellations against the decisions of the UAE Trademarks Office. The Grievance Committee will be headed by a specialised judge who will be nominated by the Ministry of Justice and two other members to be appointed by the Ministry of Economy. The decisions of the Grievance Committee are only subject to the appeal before the Federal Court of Appeal.
Timeframe for Examination & Opposition
The New Law has issued new time frames for examination and opposition that differ from the previous law:
- The Ministry of Economy has increased the timeframe for trademark examination to 90 days from the date of application for trademark registration in the UAE. As per the previous law, the examination timeframe was only 30 days.
- The timeframe to file an appeal to a competent court against the Trademarks Committee’s decision on trademark rejections has been changed to 30 days. The timeframe used to be 60 days in the previous law
Addition of Geographical Indications
As per Article 40 of the new UAE Trademark Law, Geographical Indications are eligible for protection as long as they are protected in their country of origin. As per Article 41, the Ministry of Economy will prepare a Geographical Indications Register to include the details of a Geographical Indication that has been accepted for registration.
The new Law defines Geographical Indications as a sign or a group of signs in any form such as words, including geographical or personal names, letters, numbers, holographic elements, single colour or a group of colours. Geographical Indications were not regulated in the UAE before. However, it was mentioned in the previous law only in terms of marks that cannot be registered in the UAE.
Penalties for Violations
The new law imposes higher penalties for trademark infringement in the UAE. A penalty of AED 100,000 to AED 1,000,000 will be imposed on those who commit acts of counterfeiting, imitation, or using a trademark in bad faith which is owned by another. The same penalty will be incurred on those who knowingly import and export counterfeit products.
Hire Jitendra Intellectual Property for UAE Trademark Registrations
The new law has made the process of trademark registration in the UAE more flexible for brand owners. However, brand owners need to seek the advice of trademark agents in Dubai such as Jitendra Intellectual Property (JIP) before making any move. JIP is one of the leading IP firms in Dubai with years of experience.
JIP can simplify the process of trademark registration in the UAE with our bespoke services including trademark search, trademark watch services, trademark renewal, trademark registration under Madrid Protocol etc. We can advise you on the selection of appropriate trademark classes and file them properly with the UAE Trademark Office. Our qualified agents will help you out in the case of infringement or opposition proceedings. Secure your brands across the GCC by availing of our bespoke trademark services.