ICLG Trade Marks Guide 2017 - Trademark

1 RELEVANT AUTHORITIES AND LEGISLATION

1.1 What is the relevant trade mark authority in your jurisdiction?

The United Arab Emirates ("UAE") Ministry of Economy is the responsible authority for trade marks in the UAE.

1.2 What is the relevant trade mark legislation in your jurisdiction?

The relevant legislation is UAE Federal Law No. 37 of 1992 as amended by UAE Federal Law No. 8 of 2002 (the "UAE Trademark Law").

2 APPLICATION FOR A TRADE MARK

2.1 What can be registered as a trade mark?

As per Article 2 of the UAE Trademark Law, a trade mark can be a distinguished form of a name, word, signature, letter, figure, drawing, symbol, title, tax stamp, seal, picture, inscription, advertisement, or pack or any other mark or group of marks.

2.2 What cannot be registered as a trade mark?

Article 3 of the UAE Trademark Law clearly sets out what cannot be registered as a trade mark as follows:

signs without any distinctive character or property or which use common names of goods, products and services or the ordinary drawings or pictures of goods and products;
signs that offend public morals or which are contrary to the public order;
signs using or imitating public symbols, flags and other logos of the UAE or any Arab or international organisation or any foreign country, emblem of the Red Crescent or the Red Cross or any imitations;
identical or similar religious signs or symbols;
geographical names that can cause confusion about the origin or source of the trade mark, products or services;
the name, title, photograph or logo of a third party unless consent is obtained;
particulars of degrees of honour which do not prove that the applicant is legally entitled thereto;
signs which may mislead the public or contain false statements or descriptions;
trade marks owned by individuals or legal entities with which any deal is prohibited;
signs which will result in the loss of value of other products or services;
signs that contain the words "privilege", "privileged", "registered", "registered drawings", "copyright", "imitation is forgery", or other similar words and phrases;
national and foreign medals, coins or bank notes; or
trade marks which are a translation of an existing trade mark.

2.3 What information is needed to register a trade mark?

In order to register a trade mark in the UAE, one will need to submit the following:

a notarised Power of Attorney translated into Arabic if it is written in a different language (if the document is signed outside of the UAE, it will need to be legalised by the UAE Embassy and the Ministry of Foreign Affairs in the country of origin);
a clear copy of the trade mark to be registered;
the licence of the company owning the trade mark (if the owner is a corporate entity); and
the class in which the trade mark is to be registered and the list of goods.

2.4 What is the general procedure for trade mark registration?

All documents mentioned in question 2.3 must be submitted to the Ministry of Economy either in person or electronically. Once all the documents are submitted, the Ministry of Economy will examine the submission and provide a response to the applicant, either providing a preliminary approval, requesting additional information, or rejecting the submission.

2.5 How can a trade mark be adequately graphically represented?

A trade mark must be unique and take a distinctive form as well as comply with the restrictions in Articles 2 and 3 of the UAE Trademark Law. The trade mark can either be in colour or in black and white and, in both instances, must be submitted in a high-resolution format. Audio and olfactory trade marks can also be submitted and must contain an accurate, detailed description and/or an audio file.

2.6 How are goods and services described?

The UAE utilises the Nice Classification System and therefore follows the standard description for all 45 classes mentioned in the Nice document. It is important to note that the UAE Ministry of Economy will rarely accept amendments to the standard list of goods provided under the Nice Classification System.

2.7 What territories (including dependents, colonies, etc.) are or can be covered by a trade mark in your jurisdiction?

The UAE Ministry of Economy only covers the registration of trade marks in all seven Emirates which comprise the UAE: Abu Dhabi; Dubai; Sharjah; Ajman; Umm Al Quwain; Ras Al Khaimah; and Fujeirah.

2.8 Who can own a trade mark in your jurisdiction?

A trade mark can be owned either by a private individual or by a corporate legal entity.

2.9 Can a trade mark acquire distinctive character through use?

While a trade mark must always comply with the restrictions listed in questions 2.2 and 2.3, it may acquire distinctive character if it has been used widely enough and for an extended period. A decision on whether a trade mark has acquired distinctive character would be fully up to the discretion of the UAE Ministry of Economy and there is no specific test that has been codified in the UAE Trademark Law.

2.10 How long on average does registration take?

From the date of submission of a trade mark application, registration may take 6–9 months. If an opposition is submitted, registration may take 1–2 years.

2.11 What is the average cost of obtaining a trade mark in your jurisdiction?

The average cost of the UAE Ministry of Economy fees for registering one trade mark in one class in the UAE is USD 3,600. This does not include fees which will need to be added for the possible legalisation of a Power of Attorney or any translation of documents into Arabic.

2.12 Is there more than one route to obtaining a registration in your jurisdiction?

There is only one route to register a trade mark in the UAE, which is through the UAE Ministry of Economy.

2.13 Is a Power of Attorney needed?

A Power of Attorney is needed by an agent or an attorney to represent either a private individual or a legal entity before the UAE Ministry of Economy.

2.14 If so, does a Power of Attorney require notarisation and/or legalisation?

If the Power of Attorney is signed in the UAE, it must be signed before a UAE Public Notary. If the Power of Attorney is signed outside the UAE, it must be legalised by the Ministry of Foreign Affairs and the UAE Embassy in the country of signature, and by the UAE Ministry of Foreign Affairs.

2.15 How is priority claimed?

The UAE is a signatory to the Paris Convention and it is therefore possible to claim priority. An application must be filed with the UAE Ministry of Economy accompanied by a Power of Attorney and documentary evidence of the trade mark registration.

2.16 Does your jurisdiction recognise Collective or Certification marks?

Yes, both these marks are recognised in the UAE.

3 ABSOLUTE GROUNDS FOR REFUSAL

3.1 What are the absolute grounds for refusal of registration?

Any attempt to register a trade mark which falls under the restrictions of question 2.2 will be met with absolute refusal of registration.

3.2 What are the ways to overcome an absolute grounds objection?

If the registration of a trade mark is rejected, the applicant may file an appeal to the rejection within 30 days of receipt of the same to the trade mark committee, a body created by the UAE Trademark Law (the "Trademark Committee").

3.3 What is the right of appeal from a decision of refusal of registration from the Intellectual Property Office?

An applicant has a full right of appeal to a trade mark registration that is rejected.

3.4 What is the route of appeal?

An appeal to a rejected registration attempt would be made to the Trademark Committee. Should the appeal be rejected, a further appeal can be made before the UAE Civil Court.

4 RELATIVE GROUNDS FOR REFUSAL

4.1 What are the relative grounds for refusal of registration?

Relative refusal of a trade mark registration will usually occur when a proposed mark resembles an existing registered mark.

4.2 Are there ways to overcome a relative grounds objection?

An appeal can be made to a relative grounds objection if there are grounds for explaining the difference between the proposed mark and the existing mark. Substantive proof will need to be submitted showing that there is no confusion between the two marks to be successful in an appeal.

4.3 What is the right of appeal from a decision of refusal of registration from the Intellectual Property Office?

An applicant has a full right of appeal to a trade mark registration that is rejected.

4.4 What is the route of appeal?

The route of appeal will be the same as in question 3.4.

5 OPPOSITION

5.1 On what grounds can a trade mark be opposed?

While the UAE Trademark Law is not explicit on the grounds of an opposition to a trade mark registration, such an opposition must be accompanied with relevant documentary evidence supporting the request for opposition. Although bad faith is not recognised as a concept in the UAE Trademark Law, we have seen it used successfully as an argument for an opposition to a trade mark registration.

5.2 Who can oppose the registration of a trade mark in your jurisdiction?

Any person or entity may oppose a trade mark registration if they have substantive proof that they would be damaged by such a registration and can provide sufficient evidence to the satisfaction of the Trademark Committee.

5.3 What is the procedure for opposition?

To oppose a trade mark registration, a written request detailing the grounds for opposition must be submitted to the UAE Ministry of Economy in person or electronically. As per Article 14 of the UAE Trademark Law, such an objection must be filed within 30 days from the date of the publication of the trade mark registration. An opposition may take anywhere between 4 months and 18 months depending on the complexity of the matter.

6 REGISTRATION

6.1 What happens when a trade mark is granted registration?

When a trade mark is registered, a registration certificate is provided to the trade mark owner upon payment of the remainder of the registration fees.

6.2 From which date following application do an applicant's trade mark rights commence?

An applicant's trade mark rights begin on the date of filing of the application for registration.

6.3 What is the term of a trade mark?

A trade mark is registered for a 10-year period.

6.4 How is a trade mark renewed?

To renew a trade mark in the UAE, a valid Power of Attorney must be submitted along with a copy of the expiring trade mark registration certificate. The average cost of the UAE Ministry of Economy fees for renewing a trade mark in the UAE is USD 3,900 which includes fees for the publication of the renewal notice in two newspapers, as is required by the UAE Trademark Law. There is a grace period of 3 months from the date of expiry for a trade mark to be renewed.

7 REGISTRABLE TRANSACTIONS

7.1 Can an individual register the assignment of a trade mark?

An assignment can be registered with the UAE Ministry of Economy in the Trademark Register and must be presented in a written format signed by both parties.

7.2 Are there different types of assignment?

Yes, there are different types of assignment as only a portion of the products or services covered under the trade mark can be assigned.

7.3 Can an individual register the licensing of a trade mark?

Yes, the licensing of a trade mark can be registered with the UAE Ministry of Economy in the same format as the assignment mentioned above.

7.4 Are there different types of licence?

There are several licences recognised in the UAE. Article 34 of the UAE Trademark Law outlines that a licence can be limited in its geographic scope, its length of time (as long as it does not exceed its protection period), its quality control, and its conditions of usage. Licensing trade marks in the UAE are also differentiated based on exclusivity and non-exclusivity.

7.5 Can a trade mark licensee sue for infringement?

A trade mark licensee may be compelled to sue for infringement depending on the licence agreement signed with the licensor. In some instances, licensees are obligated to sue if a third party infringes the original trade mark, should the licensor not be capable of filing the suit.

7.6 Are quality control clauses necessary in a licence?

While there is no legal requirement for quality control clauses in a licence, these are strongly encouraged and stated as permissible restrictions in Article 34 of the UAE Trademark Law.

7.7 Can an individual register a security interest under a trade mark?

Yes, as long as the trade mark is registered with the UAE Ministry of Economy.

7.8 Are there different types of security interest?

There are different types of security interests but these are not regulated by the UAE Ministry of Economy and are up to the discretion of the parties as long as they do not contravene any applicable UAE laws.

8 REVOCATION

8.1 What are the grounds for revocation of a trade mark?

A trade mark can be revoked if a mistake has been made during its registration; such a decision would be subject to the discretion of the UAE Ministry of Economy. A trade mark can also be revoked if it has not been used for a consecutive 5-year period, as per Article 17 of the UAE Trademark law.

8.2 What is the procedure for revocation of a trade mark?

A revocation request must be submitted to the UAE Ministry of Economy in writing or electronically with accompanying documentary evidence showing the reasoning behind the revocation request.

8.3 Who can commence revocation proceedings?

The UAE Ministry of Economy may request the revocation of a trade mark as well as any party which may have suffered damage due to a mistakenly registered trade mark.

8.4 What grounds of defence can be raised to a revocation action?

In relation to the non-use grounds, a defence can be based upon usage of the mark at any point during the last 5 years through extensive documentary evidence or upon a legal impossibility of usage of the trade mark. In relation to the mistaken registration grounds, a defence can be based upon evidence showing the trade mark is markedly different from the prior registration and that there is no chance of confusion between both marks.

8.5 What is the route of appeal from a decision of revocation?

Once the UAE Ministry of Economy has issued its decision, an appeal can be made before the UAE Civil Court which comprises 3 levels: the Court of First Instance, the Court of Appeals and the Court of Cassation. The decision will be final once it reaches the level of the Court of Cassation.

9 INVALIDITY

9.1 What are the grounds for invalidity of a trade mark?

The grounds for invalidity have been covered in the sections relating to opposition and revocation of trade marks in the UAE.

9.2 What is the procedure for invalidation of a trade mark?

The procedure would be the same as the sections relating to opposition and revocation of trade marks in the UAE.

9.3 Who can commence invalidation proceedings?

9.4 What grounds of defence can be raised to an invalidation action?

The grounds of defence are set out in question 8.4.

9.5 What is the route of appeal from a decision of invalidity?

The route of appeal is set out in question 8.5.

10 TRADE MARK ENFORCEMENT

10.1 How and before what tribunals can a trade mark be enforced against an infringer?

An infringement can be filed before the UAE Ministry of Economy or before the UAE Civil Court.

10.2 What are the pre-trial procedural stages and how long does it generally take for proceedings to reach trial from commencement?

A complaint of an infringing trade mark can be filed before four regulatory authorities with different outcomes as follows:

A complaint can be made with the Ministry of Economy which will examine the infringing trade mark and the Trademark Committee will issue a decision on whether or not to invalidate the mark.
A complaint can be made to the Department of Economic Development in the respective Emirate which, in some cases, has a separate division set up for trade mark infringement and counterfeit products. An investigation will be undertaken and if infringing products are found they will be confiscated and held, pending a judgment by the relevant court.
A complaint can be made to the Criminal Investigative Department, a division of the Police, which will also undertake an investigation on the matter. Should they find infringing products, these will also be confiscated and held pending a judgment by the relevant court.
A complaint can be made to the Customs Authority, which will increase its examination of products bearing the infringed-upon trade mark. If any infringing products are found, they will be confiscated and potentially destroyed.

10.3 Are (i) preliminary and (ii) final injunctions available and if so on what basis in each case?

Both preliminary and final injections are available and can be filed with the UAE Ministry of Economy or with the competent court. The burden will be on the applicant to provide enough evidence to warrant a preliminary injunction being granted. If products are found to be infringing a registered trade mark, a final injunction will permit the destruction of said products.

10.4 Can a party be compelled to provide disclosure of relevant documents or materials to its adversary and if so how?

In certain limited situations, a party may be compelled to provide certain documents but only if the requesting party can prove that the failure to produce such documents will severely prejudice the trade mark owner.

10.5 Are submissions or evidence presented in writing or orally and is there any potential for cross-examination of witnesses?

All evidence and submissions must be provided to the court in writing. In criminal proceedings, a witness must personally appear and provide his/her statement before the judge and be available for cross-examination. In a civil suit, witness statements are rarely utilised and if they are, such statements are submitted in writing and made available to the court ahead of time. Such witnesses may also be cross-examined by the other party.

10.6 Can infringement proceedings be stayed pending resolution of validity in another court or the Intellectual Property Office?

It is possible to stay proceedings pending the resolution of an assessment of the infringement or the submission of additional evidence on the part of the defendant in such a case. The court will look to protect the rightful owners of an IP right to the furthest extent possible, hence such stays are not often granted in matters of infringement. In the rare event that a stay is granted, the court will require that a guarantee be placed and compelling evidence for such a stay to be granted.

10.7 After what period is a claim for trade mark infringement time-barred?

The UAE Trademark Law does not provide for a statute of limitations in relation to trade mark infringement.

10.8 Are there criminal liabilities for trade mark infringement?

There are criminal liabilities for trade mark infringement, as set out in Articles 37 to 39 of the UAE Trademark Law.

10.9 If so, who can pursue a criminal prosecution?

A criminal complaint can be filed by a person or a legal entity which has an interest in a trade mark, e.g. an owner of a trade mark or a licensee authorised to file a criminal complaint, as set out in a registered licence agreement.

10.10 What, if any, are the provisions for unauthorised threats of trade mark infringement?

This has been covered in question 10.8.

11 DEFENCES TO INFRINGEMENT

11.1 What grounds of defence can be raised by way of non-infringement to a claim of trade mark infringement?

There are several grounds of defence that may be raised based on portions of the UAE Trademark Law as well as the facts of the particular case. Some examples may include lack of confusion between both marks, prior use of the defendant's mark, and broad appeal of the mark.

11.2 What grounds of defence can be raised in addition to non-infringement?

As the Trademark Committee has the discretion to accept any ground of defence, it is possible for a defence to be made based on right of honest, concurrent use or fair use, as well as other grounds; however, there are no specific defences codified in the UAE Trademark Law.

12 RELIEF

12.1 What remedies are available for trade mark infringement?

The UAE Trademark Law, in Articles 37 to 39, provides for jail time and fines as part of its remedies for trade mark infringement. Civil remedies are also available through a suit before the UAE Civil Court where monetary compensation for damages can be requested, as set out in Article 40 of the UAE Trademark Law. Lastly, a request for a preliminary injunction, garnishment, or destruction of infringing products/marks can also be made, as per Articles 41 to 43 of the UAE Trademark Law.

12.2 Are costs recoverable from the losing party and if so what proportion of the actual expense can be recovered?

Costs may be recoverable from the losing party, however these would be limited to fees paid to the court or for court procedures, as well as fees paid to any court-appointed expert.

13 APPEAL

13.1 What is the right of appeal from a first instance judgment and is it only on a point of law?

Once a decision is made by the UAE Ministry of Economy, such a decision can be appealed in its entirety before the Court of First Instance, as set out in question 8.5. Should the matter be appealed to the Court of Appeals and/or the Court of Cassation, such an appeal can only be based on an error made in law.

13.2 In what circumstances can new evidence be added at the appeal stage?

Usually, new evidence is not admissible beyond the Court of First Instance unless such evidence has been recently discovered by either one of the parties, or an event leading to the evidence existing had not transpired.

14 BORDER CONTROL MEASURES

14.1 What is the mechanism for seizing or preventing the importation of infringing goods or services and if so how quickly are such measures resolved?

As a first step, a complaint can be made before the UAE Ministry of Economy either in person or electronically. A complaint can also be filed with the Department of Economic Development in the relevant Emirate in the UAE in which the importation is occurring. In addition, a complaint can be made directly with the customs authority, which may also stop any infringing products from entering the country.

15 OTHER RELATED RIGHTS

15.1 To what extent are unregistered trade mark rights enforceable in your jurisdiction?

As per Article 4 of the UAE Trademark Law, internationally recognised marks are afforded automatic protection under the law as determined by the public's awareness of such a mark.

15.2 To what extent does a company name offer protection from use by a third party?

Company names in the UAE are registered with the Department of Economic Development in each respective Emirate. If the registration is periodically renewed, the company name will be protected from any third party utilising a similar name. If the registration leads to a company being incorporated with the particular name, protection will be afforded as long as the company remains in existence.

15.3 Are there any other rights that confer IP protection, for instance book title and film title rights?

Trade mark rights are narrowly construed in the UAE, as per the definitions previously provided in the UAE Trademark Law. It may be possible for a title to be registered as a trade mark in the UAE, however it may need to be distinct and unique to obtain protection.

16 DOMAIN NAMES

16.1 Who can own a domain name?

A private individual or a legal entity may own a domain name in the UAE.

16.2 How is a domain name registered?

A domain name in the UAE is registered with the .ae Domain Administration (".aeDA").

16.3 What protection does a domain name affordper se?

A domain name is protected if it is also registered as a trade mark in the UAE. Protection may be enforced before the .aeDA dispute resolution mechanism, which is identical to ICANN's Uniform Dispute Resolution Policy. While not explicitly stated, it is understood that the .aeDA dispute resolution policy will also afford protection to domain names which have become commonly utilised and are distinctly associated with certain products or services.

17 CURRENT DEVELOPMENTS

17.1 What have been the significant developments in relation to trade marks in the last year?

Several Departments of Economic Development in Emirates in the UAE have created electronic platforms allowing trade mark owners to file infringement and counterfeit complaints electronically to speed up the seizing of counterfeit goods.

17.2 Please list three important judgments in the trade marks and brands sphere that have issued within the last 18 months.

There are two important judgments relevant to this discussion issued within the last 18 months:

A Dubai Court of Cassation ruling overturning a Court of Appeal ruling on the dismissal of a cancellation action due to the confusion of two brands. The ruling was welcomed by owners of international brands as it cemented the protection of well-established global brands from sophisticated copycats.
A UAE Federal Supreme Court ruling upholding bad faith as a reason to lose the ownership of a trade mark, even if it benefits from being filed earlier in time.

17.3 Are there any significant developments expected in the next year?

We expect the UAE Ministry of Economy, as well as other government stakeholders, to continue providing the public with electronic methods of filing and protecting trade marks, which will lead to faster response times and more efficient usage of the registration and protection mechanisms that are already in place.

The industry will also continue to await the implementation of a Gulf Cooperation Council (GCC)-wide trade mark registration authority to allow for a single registration to cover all GCC countries.

17.4 Are there any general practice or enforcement trends that have become apparent in your jurisdiction over the last year or so?

There continues to be a trend toward increasing involvement of the UAE Ministry of Economy and other government authorities in the prohibition of counterfeit products being sold in the country, and this has led to a number of international brands partnering with the government to aid them in this endeavour.

Originally published by Global Legal Group Ltd, London.

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.

United Arab Emirates: ICLG Trade Marks Guide 2017