What Does The New UAE Trademark Law Say About Protecting Well-known Trademarks?
What’s the common element that binds the trademarks of MCDONALD’s, WALMART, PEPSI, and APPLE? They are all well-known trademarks and their visibility and brand reach cut across geographic boundaries and demographics. However, the protection of well-known trademarks in the UAE has long been a grey area as the Trademark Law (Federal Law No 37 of 1992) and its subsequent amendments were silent on it. The new UAE trademark law has improved its stance on the registration of well-known trademarks by dedicating a section for it.
The New Law (Federal Decree-Law No 36 of 2021), which came into effect in 2022, is expected to improve the process of trademark registration in the UAE. The new law states the definition, registrability and enforceability of well-known trademarks in the UAE. Understanding the laws surrounding well-known trademarks is essential not only for the big brands but also for the small businesses as the latter can avoid costly infringement lawsuits.
Here is an article that provides you with a fresh view into the protection of well-known trademarks in the UAE as espoused in the New Trademark Law. However, it is advisable to consult with trademark agents in the UAE before making any decision related to the protection of your IP assets. Read ahead to know further:
What are Well-known Trademarks?
The Federal Decree-Law No 36 of 2021 provides certain parameters to determine whether a trademark can be considered a well-known trademark. However, brand owners must consult with trademark agents in the UAE to determine whether the trademark in question is well-known or not. You can use the following points to identify a well-known trademark as stated in Article 4 of the Federal Decree-Law No 36 of 2021:
- The extent to which the mark is known to the public as a result of its promotion
- The period of registration of the trademark and its use
- Number of countries in which the mark is registered or well-known
- The commercial value attached to the trademark
- The extent of the trademark’s impact on the promotion of goods and services that use it to distinguish them
Registration of Well-known Trademarks in the UAE
As per the new UAE Trademark Law, well-known trademarks should not be registered to distinguish goods or services that are not identical or similar to those distinguished by these Trademarks in two situations. Given below are those two situations:
- If the use of the Trademark indicates the presence of a connection between the goods or services required to be distinguished and the goods or services of the owner of the well-known Trademark
- If the use of the Trademark would hurt the interests of the owner of the well-known Trademark
How the New Law does Differ from the Previous UAE Trademark Law?
The criteria mentioned in the new UAE Trademark Law to determine the well-known trademarks are compatible with those stated in Article 2 of the Joint Recommendation of The Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of the World Intellectual Property Organization (WIPO). However, it is interesting to note that the previous UAE Trademark Law did not state any criteria for the determination of well-known trademarks. The previous law for trademark registration in the UAE only stated that the extent of the concerned public’s knowledge of a trademark due to its promotion should be taken into consideration. The new law has removed the ambiguity surrounding the protection of well-known trademarks in the UAE. However, you need to consult with trademark agents in the UAE before applying for trademark registration in the country.
Hire Jitendra Intellectual Property for UAE Trademark Registration
The new law for trademark registration in the UAE has repealed the old law, which is the Federal Law No. 37 of 1992. The New UAE Trademark Law addresses some of the issues that were unclear in the previous law, such as non-conventional marks, geographical indications, penalties for infringement etc. However, the improvement in the protection of well-known trademarks in the UAE is regarded as the chief highlight of the new law.
To know more about the issue, brand owners can consult with the best trademark agents in the UAE such as Jitendra Intellectual Property (JIP). The new law has made the process of trademark registration in the UAE more flexible for brand owners. JIP is one of the leading IP firms in Dubai with years of experience in building a brand identity for businesses across the GCC.