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What are the important changes made in the UAE New Trademark Law?

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Overview

2021 remained a year of legislative reforms for the UAE and witnessed 40 decree-laws and amendments being rolled out for gaining a competitive advantage in the global economic landscape. One of the biggest additions is the recently introduced new Federal Trademarks Law No. 36 of 2021 (“New Law”), which has come into force on 2nd January 2022. The New Law has replaced the previous Trademark law, the Federal Law No. 37 of 1992. Though the amendments have been made keeping in perspective the GCC Unified Trademarks, some new provisions on different aspects and procedures have been introduced in the new law.

The New Law addressed various aspects of Trademark registration in UAE that were not fully covered earlier including the registration of non-traditional trademarks. Rules on infringement of trademarks have been made more stringent with increased sanctions and penalties. The new law also allowed multiclass application which was not included in the previous law. The registration of Geographical Indications is an innovative addition and newly introduced in UAE Trademark law.

The procedures outlined in the New Law are detailed in executive regulations.

What are the most important changes brought in the New Trademark Law?

Following are some of the most important changes brought in by the new trademark law 2021 in the UAE.

Enhancing the domain of Nontraditional Trademarks

Nontraditional visible and invisible trademarks have been included for registration in the new law such as holograms, single colour, 3D shapes, scents, sounds etc.

Trademark Registrability

Though the list of non-registrable trademarks remained more or less the same, the new law brought in an amendment to specifically prevent registration of trademarks which are translation, phonetic translation or transliteration of any well-known and already registered trademarks to reduce the risk of infringement.

The new law also made functional 3D trademarks non registrable.

Multiclass Trademark Registration

While the previous law only allowed single class applications, the new law now allows trademark applicants to include the multi-class in a single application.

Increased Penalties

UAE trademark office has raised penalties for trademark infringement in the new law enforcing AED100,000 to AED1,000,000 for counterfeiting, imitation, bad faith usage, possessing material for counterfeiting, engaging in export-import of counterfeit products. Owning a counterfeit product or selling it attracts a fine of AED 50,000 – 200,000. The fine used to be AED 5000 minimum in the previous trademark law.

More Elaborated Procedures on Infringement

The new law has provided more elaborated procedures on infringement including exhaustive reporting of infringement; withholding products, tools and equipment used in the infringement and legal proceedings; preventing suspected counterfeit products from entering commercial channels; preventing suspected counterfeits from being exported and preservation of evidence.

The new law seeks initiation of urgent proceedings in any matter of trademark infringement and within a maximum of 20 days.


Registration
of Geographical Indications

Previously not regulated in the UAE, the addition of GIs in the new trademark law complies with the International Trademark registration system.

Geographical indications (GI) are signs used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin. To function as a GI, a sign must identify a product as originating in a given place and can be a sign or many signs in any form such as geographical names, personal names, numbers, colours and words.

In the new Law, UAE addresses the emergence of conflicts between geographical indication tags and trademarks with their rapidly increasing usage as forms of intellectual property rights and prevents the registration of a GI in the event of any confusion with a trademark application or any trademark registered and used in UAE in good faith.

Establishment of Complaints Committee

A committee has been established to hear all complaints and objections to the decisions issued by the UAE trademark office of trademark applications, cancellations and oppositions.

Challenging the Decisions of Complaint Committee

As per the new law, all decisions issued by the Complaint Committee can now be appealed before the Federal Court of Appeal instead of the Court of First Instance significantly reducing the litigation time with only two stages of court proceedings.

Request for Cancellation of a Trademark

The new trademark law stipulates that the Ministry of Economic Affairs should now receive the requests for the cancellation of trademarks. Earlier a competent court was supposed to receive such requests.

Prior Use for Cancellation

The new law regulates the rights of a prior user of a trademark for trademark cancellation.

Customs Seizure based on Trademark Rights

As per the new trademark law, UAE customs can now seize imported goods that infringe trademark rights and this provision was not covered in the previous law. Once a request is filed with the customs authorities for import seizure by someone being the owner of infringed trademark rights, goods that allegedly infringe trademark rights can be stopped from shipment clearance for 20 days. Certain exceptions are however provided in the new law.

Electronic Notification

The new trademark law specifies the requirements for electronic notification which was not included in the previous law.

Revised Timelines

The New Law revises the timelines for examination of trademark applications and stipulates it to be 90 days maximum from the date of application. It used to be 30 days as per the old law.

The time frame for appealing against the decision of the Trademark Committee regarding any rejection of trademark applications has been revised as 30 days in contrast to 60 days specified in the previous law.

Trademarks Registered in Bad Faith

Trademarks registered in bad faith can be excluded following the new law and complies with the Paris Convention.

Trademark Licenses

The new law stipulates that trademark licenses no longer need to be registered with the Ministry.

Conclusion

On 2021 September 28th, the UAE joined the Madrid System and became a signatory to the Madrid Protocol for international trademark registration alongside the national filing system.

The new trademark law has come into force after the UAE government received concrete and comprehensive feedback from trademark professionals and owners of well-established brands.

It is recommended that startups and SMEs willing to expand their businesses in UAE, MENA and international markets by promoting brands may look for a trusted partner and hire a professional and locally based corporate service provider for an easy and hassle-free Trademark Registration in Dubai.

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