Trademarks

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.

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.

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.

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.

See question 2.1.

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.

The governing body is the Trademark Office in the Ministry of Economy.

The official fee from filing to registration is $2,543.

Yes, the UAE Trademark Office uses the Nice Classification, 11th Edition.

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.

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.

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.

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).

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).

No.

No. The UAE Trademark Office accepts oppositions only after the acceptance and publication of trademarks.

No.

It takes five to 10 days to receive the first office action.

It typically takes a month to publish a trademark.

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.

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.

Please see question 4.2.

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.

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.

Oppositions must be filed within 30 days of publication. This deadline cannot be extended.

The opposition is heard by the UAE Trademark Office.

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.

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.

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.

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.

No.

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.

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).

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.

A trademark infringement action can be brought before a competent court, the Dubai Economic Department or through border control measures.

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.

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.

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.

Renewal requires the submission of an application for renewal through the online system and payment of the official fee.

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.

The Ministry of Economy can file a cancellation action before the competent court to cancel a trademark that was registered unlawfully.

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.

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.

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.

A trademark licence must be recorded with the UAE Trademark Office in order to become effective vis-à-vis third parties.

No, there is no legal requirement for the inclusion of quality control clauses in a licence.

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.

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.