1 Legal framework
1.1 What is the statutory or other source of trademark rights?
The Federal Trademarks Law (8/2002) governs the trademark system in the United Arab Emirates. However, this law should be replaced by the Gulf Cooperation Council Trademark Law in the near future.
1.2 How do trademark rights arise (ie, through use or registration)?
Trademark rights in the United Arab Emirates are acquired through registration. A registered trademark owner can enforce its registered rights against infringers. In certain cases prior use can be used to claim earlier rights over a trademark; however, such claim must be made in a dispute over trademark ownership. As long as the trademark is registered, it can be enforced against a prior use claimant.
It is difficult to enforce unregistered trademark rights in the United Arab Emirates, except where the unregistered mark is also a well-known mark.
1.3 What is the statutory or other source of the trademark registration scheme?
The United Arab Emirates is a member of the Paris Convention and the Agreement on Trademark Related Aspects of Intellectual Property Rights; as such, it is bound by the mandatory provisions of protection granted to trademarks.
2 What constitutes a trademark?
2.1 What types of designations or other identifiers may serve as trademarks under the law?
Under the UAE Trademarks Law, anything with a distinctive form – such as names, words, signatures, letters, figures, drawings, logos, titles, hallmarks, seals, pictures, engravings, advertisements, packaging or any other marks or groups of marks – will be considered a trademark if it is used or intended to be used either:
- to distinguish goods or services, whatever their source; or
- to indicate that the goods or services belong to the trademark owner, due to their manufacture, selection or trading, or to indicate the rendering of a service.
2.2 What are the requirements for a designation or other identifier to function as a trademark?
See question 2.1.
2.3 What types of designations or other identifiers are ineligible to function as trademarks?
The following shall not be registered as a trademark or as a component thereof:
- marks which are devoid of any distinctive character or property, or which consist of mere denominations required by convention in relation to the goods or services, or familiar drawings and ordinary pictures of goods or services;
- marks that violate public morals or public order;
- public emblems, flags and other symbols pertaining to the state, Arab or international organisations or any institutions thereof, or of any foreign country without authorisation therefrom, and imitations of such emblems, flags or symbols;
- symbols of the Red Crescent or the Red Cross and other similar symbols, as well as imitations thereof;
- marks which are identical or similar to symbols of a purely religious nature;
- geographical names whose use may cause confusion as to the origin or source of the goods or services;
- names, surnames, photographs and emblems of third parties, without the prior consent of the third party or his or her heirs;
- particulars pertaining to titles of honour to which the applicant cannot prove it is lawfully entitled;
- marks which may mislead the public or which contain false data as to the origin or source, or other characteristics, of the goods or services, and marks that contain an imaginary, imitated or forged trade name;
- marks which are owned by natural or legal persons, where dealing with such persons is prohibited;
- marks whose registration in some classes of goods or services may diminish the value of other goods or services distinguished by such mark;
- marks containing the following words or phrases: 'privilege', 'privileged', 'registered', 'registered drawings', 'copyright', 'imitation is forgery" or similar words and phrases;
- national and foreign decorations and metal and paper currencies; and
- translations of famous marks or previously registered trademarks, where registration would confuse the consumer public as to the goods distinguished by the mark or other similar goods.
3 Registration procedure
3.1 Which governing body (ie, trademark office) controls the registration process?
The governing body is the Trademark Office in the Ministry of Economy.
3.2 What fees does the trademark office charge for an application, during prosecution and for issuance of a registration?
The official fee from filing to registration is $2,543.
3.3 Does the trademark office use the Nice Classification scheme?
Yes, the UAE Trademark Office uses the Nice Classification, 11th Edition.
3.4 Are 'class-wide' applications allowed, or must the applicant identify the specific goods or services for which the mark will be used?
Applicants can file class-wide applications. There is no requirement to identify specific goods or services – this is left to the choice of the applicant.
3.5 Must an applicant have a bona fide intention to use the trademark for the goods or services identified in the application in order to apply for registration?
The UAE Trademark Office does not require a statement of intention to use or evidence of actual use at the time the application is filed.
3.6 Does the trademark office perform relative examination of trademark applications (ie, searches for earlier conflicting marks)?
Yes, the UAE Trademark Office conducts an examination on relative grounds. Any trademark application is examined against earlier marks which have already been registered or for which registration is sought.
3.7 What types of examinations does the trademark office perform other than relative examination?
The UAE Trademark Office also conducts an examination on absolute grounds. For example, any trademark which is contrary to public order or morality or devoid of distinctive character cannot be registered as a trademark (see question 2.3).
3.8 Apart from confusion with a senior mark, descriptiveness and genericness, are there other grounds under which a mark is ineligible for registration, such as public policy reasons?
Yes, the UAE Trademark Office will not accept trademarks that contravene public morals or public order, or marks which have religious connotations (see question 2.3).
3.9 Is there a separate or supplemental register on which descriptive marks may be registered?
No.
3.10 Can a third party object to registration of a mark before the application has been published (eg, by letter of protest to the trademark office)?
No. The UAE Trademark Office accepts oppositions only after the acceptance and publication of trademarks.
3.11 Must the applicant use the trademark commercially in order to obtain a registration?
No.
3.12 How much time does it typically take from filing an application to the first office action?
It takes five to 10 days to receive the first office action.
3.13 How much time does it typically take from filing an application to publication?
It typically takes a month to publish a trademark.
4 Appeals
4.1 If the trademark office refuses registration, can the applicant appeal? If so, to what body and by what procedure?
If its application is rejected, an applicant can file an appeal with the Trademark Committee in the UAE Trademark Office within 15 days of receiving the decision.
4.2 What is the procedure for appealing a trademark office refusal?
The decision of the UAE Trademark Committee can be appealed before the Court of First Instance. Decisions of the Court of First Instance may be further appealed before the Court of Appeal. A final appeal may also be filed before the Court of Cassation.
4.3 Can the reviewing body's decision be appealed? If so, to what body and by what procedure?
Please see question 4.2.
5 Oppositions
5.1 Can a third party oppose a trademark application?
Yes, under the UAE Trademarks Law, accepted applications can be opposed within 30 days of the last publication. Oppositions can be filed based on earlier trademark rights, including both earlier applications and earlier registrations. Oppositions can also be filed based on unregistered trademark rights – for example, prior use or a well-known mark. Oppositions based on absolute grounds can also be filed, although this is rare in practice.
5.2 Who has standing to oppose a trademark application?
Any interested party can file an opposition against a published trademark. Interest can be established based on earlier trademark rights, including both earlier applications and earlier registrations, or on prior use or a well-known mark. Oppositions based on absolute grounds can also be filed, although this is rare in practice.
5.3 What is the timeframe for opposing a trademark application?
Oppositions must be filed within 30 days of publication. This deadline cannot be extended.
5.4 Which body hears oppositions?
The opposition is heard by the UAE Trademark Office.
5.5 What is the process by which an opposition proceeds?
Oppositions are filed in writing. The applicant must submit a written response in response to the opposition; if it fails to do so, the application will be considered as abandoned. The UAE Trademark Office also conducts hearings where both parties can present their position.
5.6 Can the decision on the opposition be appealed? If so, to what body and by what procedure?
Decisions of the UAE Trademark Office can be appealed before the Trademark Committee within 15 days of issuance of the decision. Decisions of the Trademark Committee can be further appealed to the Court of First Instance. Decisions of the Court of First Instance can be further appealed to the Court of Appeal. A final appeal can be filed before the Court of Cassation.
6 Rights of registered and unregistered marks
6.1 What, if any, protection is afforded to unregistered trademarks?
Unregistered well-known trademarks are recognised under the UAE Trademarks Law if they have an international reputation that extends beyond the borders of the original country in which the trademark was filed. Registration of a well-known trademark is prohibited, unless requested by its original owner or by an official power of attorney from the original owner. The law also provides that the degree of knowledge or recognition of the mark in the relevant sector of the public is essential in determining how famous the trademark is.
Well-known marks have extended protection. A well-known mark cannot be registered for dissimilar goods or services if:
- use of the mark would imply a connection between the goods or services to be protected and the goods or services of the owner of the original trademark; or
- use of the mark may damage the interests of the owner of the original trademark.
Prior use of an unregistered mark can also be the basis for cancellation or opposition.
6.2 What legal rights are conferred by a trademark registration?
The UAE Trademarks Law declares the registrant as the owner of the trademark. The owner of the trademark acquires the exclusive right to use the trademark in the United Arab Emirates, and the right to initiate action against any unauthorised use or attempt to register an identical or confusingly similar trademark by any third party without permission.
6.3 If there is a separate register for descriptive marks, what legal rights are conferred by registration therein?
No.
7 Enforcement and remedies for trademark infringement
7.1 What remedies are available against trademark infringement?
The following remedies are available against infringers under the UAE Trademarks Law:
- interim injunction and precautionary measures;
- permanent injunction restraining the defendant from further infringement;
- court order for the destruction of all infringing goods;
- publication of the judgment issued against the infringer; and
- destruction of infringing goods.
7.2 What remedies are available against trademark dilution?
The UAE Trademarks Law does not specify remedies or legal action against dilution. However, in the context of well-known trademark rights, the law prohibits the registration of well-known trademarks, even for dissimilar good and services not covered by the well-known trademark (see question 6.1).
7.3 Does the law recognise remedies against other harms to trademark rights besides infringement and dilution?
Besides harm caused by infringement, if a similar or identical mark is registered by a third party, other than the actual owner, the owner can file a cancellation action based on its earlier trademark rights.
7.4 What is the procedure for pursuing claims for trademark infringement?
A trademark infringement action can be brought before a competent court, the Dubai Economic Department or through border control measures.
7.5 What typical defences are available to a defendant in trademark litigation?
Under the UAE Trademarks Law, the following defences are available:
- The defendant's trademark is sufficiently distinguishable from the plaintiff's mark;
- The defendant is using the mark for goods or services which do not conflict with those covered by the registered trademark;
- The defendant's use of the trademark is descriptive;
- The plaintiff's trademark is subject to disclaimer and such use does not constitute infringement;
- The plaintiff's trademark is unregistered and is not famous in the United Arab Emirates; or
- The defendant used the mark in good faith and without knowledge of the registration of a similar or identical trademark in the United Arab Emirates.
7.6 What is the procedure for appealing a decision in trademark litigation?
In the United Arab Emirates, the decision of the Court of First Instance may be appealed before the Court of Appeal and a final appeal may be filed before the Court of Cassation.
8 Maintenance and removal of registrations
8.1 What is the length of the initial term of registration and what is the length of renewal terms?
The trademark registration remains valid for 10 years from the filing date. The trademark owner can renew the trademark for further 10-year periods thereafter. As long as the trademark is renewed, it will remain on the trademark register and there is no limitation in the law.
8.2 What, if anything, must be submitted to the trademark office to maintain or renew a registration?
Renewal requires the submission of an application for renewal through the online system and payment of the official fee.
8.3 What are the grounds for cancelling a trademark registration?
A trademark which is not used for five consecutive years may be cancelled by way of a non-use cancellation action. The trademark owner can defend such action by providing reasonable justification for non-use, which includes reasons beyond its control.
A registered trademark can also be cancelled through a cancellation action if the trademark was unlawfully registered. There is no definition of such unlawfulness in the law; however, prior registration, prior use and an unregistered well-known mark are all strong grounds for a cancellation action.
8.4 Under what circumstances may the trademark office cancel a registration on its own initiative?
The Ministry of Economy can file a cancellation action before the competent court to cancel a trademark that was registered unlawfully.
8.5 What is the procedure by which a third party may seek cancellation of a trademark registration?
Cancellation of a trademark may be initiated by an interested party by submitting a petition before the competent civil court of first instance. Litigation in the United Arab Emirates is mostly based on written submissions, with few oral submissions.
8.6 What is the procedure for appealing a decision cancelling a registration?
In the United Arab Emirates, the decision of the Court of First Instance may be appealed before the Court of Appeal and a final appeal may be filed before the Court of Cassation.
9 Licensing
9.1 Are there particular requirements, such as quality control by the licensor, for a trademark licence to be valid?
There are no requirements such as quality control for a licence to be valid. However, there are some provisions that prohibit the inclusion of certain contractual clauses in licence agreements. For instance, it is prohibited to restrict the licensee with limitations that do not relate to the rights covered by the trademark registration.
9.2 Must trademark licences be recorded with the trademark office or other governing body?
A trademark licence must be recorded with the UAE Trademark Office in order to become effective vis-à-vis third parties.
9.3 Can a licensor lose its rights in a trademark by failing to comply with its obligations under the licence, such as maintaining quality control?
No, there is no legal requirement for the inclusion of quality control clauses in a licence.
10 Protection of foreign trademarks
10.1 Under what circumstances may foreign trademarks not registered in the jurisdiction be enforced (eg, under unfair competition law)?
A foreign trademark can be enforced in the United Arab Emirates if it qualifies as a well-known mark and its reputation extends to the United Arab Emirates. The law requires that the trademark have an international reputation which extends beyond the borders of the original country in which it is registered. The law also provides that the degree of knowledge or recognition of the mark among the relevant sector of the public is essential in determining how famous the trademark is.
10.2 Does the trademark office permit registration of a mark based on a foreign or international (Madrid) registration?
The United Arab Emirates is not a member of the Madrid System. Foreign registrations may help to overcome certain objections during the registration process; however, an applicant cannot claim a foreign registration as a matter of right to register the same trademark in the United Arab Emirates.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
