Intellectual Property
What laws regulate for trademarks in (jurisdiction) in the UAE? Trademarks are regulated by UAE Trademarks Law Number 36 for the Year 2021. This is a federal law and hence applies to trademarks throughout all the Emirates of the UAE.
Is (jurisdiction) member to Madrid system or Paris Convention providing priority rights? The UAE is a party to the Madrid international trademarks system as the Madrid Protocol came into force in the UAE in December 2021. The UAE is also bound by the Paris Convention and all agreements incorporated into the TRIPS agreement since its accession to the World Trade Organization in 1996.
Do you require to have physical or legal presence in (jurisdiction) before being able to register a trademark? No, having an actual business registered in the UAE, or even having a distributor or reseller in the country is not a prerequisite to protecting your trademark rights. In order to proceed with an application to register a trademark, it is important to determine which entity ought to be the applicant an ensure it is sustainable and capable to issue Powers of Attorney to enable your attorney act on your behalf.
Is it mandatory to conduct a trademark search before proceeding with an application for trademark registration? Although Trademark searches are not mandatory, searching the database of for previously registered trademarks is highly advisable. Failure to identify a previously filed conflicting trademark may pose a challenge to your application by way of on objection, or rejection issued by the Trademarks Department or an opposition filed by a third party. Furthermore, trademark clearances must not only take into consideration any preexisting trademark registrations but also marks that are is use and marks that may conflict with pre existing company and trade names.
Is it possible to register a trademark in the name of an individual or a corporate entity and if so, what specific documents are needed? It is indeed possible to register a trademark in the name of an individual. However, while some jurisdictions may not allow such registration, it is advisable to have uniform ownership throughout the world and hence most applicants prefer the mark is registered in the name of a corporate entity, allowing that entity to act as propriety holder for a number of rights and signing agreements to exploit those rights by way of licenses or assignment.
Is it recommended to register variations of a trademark in the same class? Choosing a trademark is an important decision that should be properly assessed in consultation with your trademark attorney. Some trademark assets must be separated into several trademark applications in order to ensure a mark is properly secured against third party claims or threats of infringements. In this instance, one must consider whether to register a trademark in Arabic characters, or Latin Characters or a combination of both, whether to register the logo separate from the wordmark and whether to register the trademark in specific color or to include several color combinations.
Is it possible to designate more than one class of goods or services in a trademark application? The UAE Law allows for multiclass filings where goods or services must be designated pursuant to international classification of Nice agreement.
What are the stages a trademark application must complete before maturing to a registration? Once a trademark application is submitted and official filing fees are paid, the Trademarks Office (TMO) would examine the application to ascertain it is inherently capable of registration and does not conflict with a previously filed application, after which the Ministry of Economy issues its examination decision to accept, reject or accept the application with conditions. If accepted, the applicant must pay official fees for publication within 30 days from receiving the acceptance decision. If the applicant wishes to appeal the examination decision, it must do so within 30 days from receiving the examination decision, otherwise the applicant shall be deemed to have abandoned the application. After an application is published in the Trademarks Journal issued by the Ministry of Economy, thew applicant must pay the official registration fee within 30 days from the lapse of the opposition period which in turn is 30 days from date of publication.
If a trademark is opposed, what is the process for overcoming an opposition? Any interested party shall have the right to oppose a trademark application within 30 days from publishing the application in the Trademarks Journal after paying the prescribed opposition fee. The applicant will have to respond to the opposition in writing within 30 days of notification, otherwise it shall be deemed as having abandoned the trademark application. TMO would examine both party submissions and determine a date for hearing of statements if it deem necessary. Attendance of oral hearings would also require payment of an official fee. TMO shall issue its decision in the opposition with a detailed reasoning and may place any stipulations on the application as it deems appropriate. If however an opposition is raised against the trademark application and the trademark is eventually refused, the applicant may appeal such decision within 30 days to the appeals Committee.
Any interested party shall have the right to oppose a trademark application within 30 days from publishing the application in the Trademarks Journal after paying the prescribed opposition fee. The applicant will have to respond to the opposition in writing within 30 days of notification, otherwise it shall be deemed as having abandoned the trademark application. TMO would examine both party submissions and determine a date for hearing of statements if it deem necessary.
What are the remedies and penalties for trademark infringement in the UAE?The Trademarks Law along with other laws including the Uniform Customs Law provide for remedies against trademark infringement. These remedies can allow for suspending customs clearance procedures and seizure of goods at the border level. Civil remedies allow for precautionary procedures ordered by court on an expedited basis preserving evidence, preventing sale, export or import of counterfeit goods, placing an attachment or carrying out a detailed stock report. Furthermore any injured party maintains the right to seek compensation for damages.
Penalties can either be Fine and imprisonment in addition to confiscation of the counterfeit goods or tools and machines used to facilitate the infringement. Fines can range anywhere from AED one hundred thousand to one million dirhams and jail up to one year.
What laws regulate Copyright in UAE? The UAE Federal Law No. 38 of 2021 regulates Copyrights and Neighboring Rights (“Copyright Law”). This law repeals and replaces Law No. 7 of 2002.
What works are protected by Copyright? The work of authors and holders of neighboring rights are afforded protection under the Copyright Law. Although a non -exhaustive list, but the Copyright Law specifically mentioned the following works:
Books, brochures, articles and other written works
Smart applications, computer programs and applications, databases and similar works determined by the Minister of Economy
Lectures, speeches, oral and written sermons and other works of a similar nature
Theatrical works, musical shows, and pantomime
Audio, visual or Audiovisual works
Architectural works, engineering draws and plans
works of drawing, sculpture, engraving and printing works of photography
Works of applied art and plastic arts, illustrations, geographical maps, sketches and related 3D works
Derivative works without prejudice to original work
Title of work and the program (if creative)
Should copyright be registered? The Copyright Law Does not stipulate registration as a pre requisite for protection although it allows for depositary with a special register at the Ministry of Economy. Non registration shall not impact the rights enjoyed under the Copyright Law. However, from practical experience, registered or deposited copyrighted works allow for a much smoother enforcement against violations.
Penalties for copyright violation can be either a fine, imprisonment or both. Fines range from ten thousand dirhams and reach up to seven hundred thousand dirhams depending on the seriousness of the crime committed. Jail time may range from 2 months up to three years.
What are the remedies and penalties available for copyright infringement?Suspending clearance of goods by Customs for inspection and subsequently seizure of goods is one remedy applied at the border. Furthermore any injured party maintains the right to seek compensation for damages. Penalties for copyright violation can be either a fine, imprisonment or both. Fines range from ten thousand dirhams and reach up to seven hundred thousand dirhams depending on the seriousness of the crime committed. Jail time may range from 2 months up to three years.
