United Arab Emirates: Trademark Considerations For The Hospitality Sector In The UAE

Last Updated: 25 June 2018
Article by Rasha Al Ardeh and Kareem Bessisso

By the Dubai Expo in 2020, the UAE plans to have more than 170,000 hotel rooms according to news reports. Dubai currently boasts 100,000 hotel rooms, surpassing other major touristic cities such as London, which has 90,000 hotel rooms. Dubai is now tied with Bangkok and New York, each of which also have 100,000 hotel rooms. According to recent news reports, over 150 five-star hospitality projects, 80 four-star projects and 35 three-star projects are currently underway in Dubai. The expected completion date for 40 of those projects is the end of this year.

Given these numbers, from an intellectual property perspective, hospitality market entrants to a vibrant market, such the UAE, now need to take a more circumspect approach to leveraging their available resources. The question that poses itself to such entrants is what would be the most suitable approach to capitalising on intellectual property rights with the aim of increasing competitiveness?

The reality is that intellectual property is very important in the context of the hospitality industry, especially when considering trademarks and branding. A trademark communicates the source of the service to consumers. This allows consumers to associate the quality of the service with the specific service provider. In short, the trademark signifies the brand on offer and provides indications as to the origin and quality of the service on offer. In this article, we shall highlight some trademark issues that arise under UAE law, which hospitality industry experts ought to consider.

Trademark registration

Trademark registration is the very first step that market entrants, who wish to enter into the UAE market, must consider and prioritise. The UAE Federal Law No. 37 of 1992 and its amendments (the "Trademarks Law"), which govern trademarks in the UAE, provides for the registration of trademarks with the Ministry of Economy. The Trademarks Law and judicial precedent recognises the prior use concept with respect to trademark rights protection, where seniority in use of a mark is the basis for the accrual of trademark rights. Nevertheless, lack of registration allows third parties to easily infringe trademarks. Enforcing unregistered trademark rights in the UAE is challenging, especially with the administrative authorities or the police.

When registering a trademark in the UAE, the classes and specifications of goods and services covered by the registration are of equal importance. The UAE adopts the Nice Classification 10th edition for trademark registration. In this regard, while all 45 classes are recognised in the UAE, due regard to certain cultural and religious nuances is necessary when drafting the specifications. For example, Class 43, is the classification of services relevant to the hospitality sector generally (it covers temporary accommodation, hotel, and food and drink services). While the Nice Classification recognises bars, clubs, casinos, and related services, a hospitality brand owner must take care to exclude such services from their application for the registration of their mark under Class 43 in the UAE. A failure to do so may well result in the rejection of their application. The UAE Trademarks Office considers that bars, clubs, casinos, and related services are contrary to public order and therefore are not registrable as a matter of law.

Trade names

Each company with a business presence in the UAE must have a trade name that is registered with the Department of Economic Development in the relevant Emirate. Trade name and trademarks systems in the UAE have for many years allowed for conflicting names and trademarks to co-exist. The systems remain unsynchronized and no crosschecking between the trade name registry (which is held with the Department of Economic Development) and the Trademark Registry (which is held with the Ministry of Economy/ Trademarks Office) exists to clear conflicts between trade name rights and trademark rights before these are registered. As a result, it was not a surprise for an owner of a five-star plus hotel brand to find their UAE-registered trademark rights effectively misappropriated by a two-star hotel in Dubai enjoying a trade name registration for the same name. This had an impact on their plans to enter into the UAE market and it was only until the trade name was amended, that the brand owner was able to operate their hotel in the UAE.

To challenge a trade name registration, brand owners must bring a Court action for cancellation of the trade name on the grounds of their UAE-registered trademark. However, the risk with trade name cancellation cases is that courts assess the ownership based on the date of first registration in the country where the dispute arose. That is, if the trade name owner in the UAE holds a trade name registration that predates that of the trademark registration, then the court may rule in favor of the trade name owner, based on the prior use argument.

As such, when registering a trademark in the UAE, hospitality brand owners ought to consider conducting proper clearance searches both at the federal level (with the Trademark Registry) and the Emirates level (with trade names registries).

Non-traditional trademarks

A hotel guest who spends a memorable holiday in a resort may also attach positive memories and emotions to the melody he heard multiple times a day. He may also recall the specific aroma he smelled as he ventured through the hotel lobby, on his way to the pool, spa or restaurant. Hospitality industry experts can capitalise on such touristic experiences of sound and smell, which a guest often associates with the hospitality service. Such sounds and smells are increasingly recognised as a new non-traditional form of trademark protection in major jurisdictions. To this end, brand owners in the hospitality industry are advised to better consider these non-traditional aspects when devising and implementing their branding strategy.

Trademarks have been historically limited to the traditional insignias such as words, slogans, and logos. However, many companies are now increasingly turning to non-traditional trademarks to gain competitive advantages. One such example of a non-traditional trademark is Verizon Wireless's "flower blossom scent". Verizon Wireless in the USA successfully managed to register the "flower blossom scent" as a trademark. Verizon uses this scent at all their stores. With this use, the scent became very distinctive and source identifier of Verizon's stores. Another famous example of a non-traditional trademark is Metro-Goldwyn-Mayer's roaring lion. MGM managed to register the roaring lion as a sound trademark to distinguish its services in the entertainment industry.

In the UAE, the Trademarks Law provides a broad definition of what constitutes a trademark. Article (2) of the same reads:

"A trademark is anything which takes a distinctive form whether names, words, signatures, letters, figures, drawings, symbols, titles, tax stamps, seals, pictures, inscriptions, advertisements or packs or any other mark or a combination thereof, used or is intended to be used, either in distinguishing goods, products or services whatever their origin is, or to show that goods or products are owned by the mark owner by virtue of their manufacture, selection or dealing in, or to indicate the performance of a service. Sound is considered a part of the trademark if it accompanies thereto."

It follows from the above definition that the list therein is non-exhaustive in terms of what can be capable of trademark registration, as long as the distinctiveness requirements are satisfied. The Trademarks Law also provides specifically for sound as a trademark. However, to date there have not been any sound or smell trademarks registered in the UAE due to the lack of guidelines for such protection and registration. Nevertheless, brand owners in the hospitality industry are encouraged to take advantage of this aspect of the Trademarks Law by seeking the protection of such non-traditional marks in the UAE.

Other IP aspects to consider

In 2010, Apple succeeded in registering their standard retail store appearance and layout as a trademark with the US Trademark Office and the European Trademarks Office. On the face of it, the Apple case demonstrates that it may be possible to protect a hotel room, lobby, spa and restaurant provided they are distinctive enough in their overall appearance, colour, shape and arrangement of furniture allowing consumers to distinguish them from other hotel rooms, lobbies, spas and restaurants. Under the UAE Trademarks Law, it could be very difficult to obtain registration for a hotel room's, or lobby's, design. However, other options for protection may be sought, such as copyright and design protection.

Conclusion

Intellectual property assets are increasingly more important given the increasing competition in the hospitality sector in the UAE. Accordingly, business owners in this sector should secure the right protection as early as possible.

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
The Legal Group
Hassan Elhais
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
The Legal Group
Hassan Elhais
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions