As part of its 50th Anniversary, the UAE announced some of the broadest changes to its legal landscape in years and the new laws are intended to keep pace with the developmental achievements of the UAE and reflect the country's future aspirations. The new amendments on Intellectual Property laws are summarized as follows:
NEW TRADEMARKS LAW
The New Federal Trademarks Law No. 36 of 2021 ("New Law"), issued on September 20, 2021, published on September 26, 2021, and came into effect on January 2, 2022. The New Law replaced Federal Law No. 37 of 1992 as amended in its entirety ("Former Law"). The Executive Regulations, which will provide further details on the implementation of the New Law, have not been issued yet. The New Law consists of Sixty-One Articles and includes significant amendments, as follows:
Expansion of protection scope
The definition of a trademark in Article 2 has been expanded to cover more types of non-traditional trademarks that can be protected such as; 3D trademarks, single color, holograms, sound and smell.
Though the registration of the 3D trademark was not stipulated in the Former Law, however, in practice there are many registered 3D trademarks in the UAE.
Marks prevented from registration
Article 3 of the New Law includes a list of cannot be registered as trademarks, which added more cases to the list of the Former Law to include any trademark that is identical, similar, imitation, translation, phonetic translation or transliteration of a previously registered trademark or well-known trademark or of a fundamental part thereof. This addition is similar to the list of the GCC Unified Trademarks Law.
In addition, the New Law specifically prevented the registration of a 3D trademark that is the shape of the products covered under the registration or the shape that is necessary functional shape with no distinctive elements.
Well-known trademarks Criteria
Article 4 of the New Law stipulates new criteria for considering a trademark as well-known as follows: the extent to which it is known to the public as a result of its promotion, or period of its registration, or its use, or the number of countries in which it is registered or becomes well-known, or its value, or the extent of its impact on the promotion of goods or services that use the well-known trademark to distinguish them.
In fact, the said criteria are compatible with the factors of determination of the well-known trademark stipulated in Article 2 of the Joint Recommendation of The Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of the World Intellectual Property Organization (WIPO)1.
It is worth mentioning that the Former Law did not provide any factors or criteria to determine whether the mark has acquired fame, it only stipulated that the extent of the concerned public's knowledge of a trademark due to its promotion should be taken into consideration.
Trade License for UAE Applicants
The New Law stipulates in Article 6 the right of any person or entity to file its trademark and it removes the requirement to submit a trade license to allow the registration of a trademark in the name of a local person/entity.
Article 8 of the New Law allows applicant/s to file multi-class application. The Former Law was similar to the other GCC Countries which do not allow multi-class filing. In the meantime, there is no application yet for the multi-class filing and more details would be provided in the executive regulations.
Article 13 of the New Law stipulates that the term to file a petition for a rejected or conditioned decision is 30 days from the date of notification, and in case of unfavorable decision is issued in the petition, the Appeal term before the competent court is 30 days from the date of notification. Unlike the Former Law which provides appeal term before the court of 60 days.
It is also important to point out that the New Law stipulates the establishment of a "Grievances Committee of Trademarks" in the Ministry which will be competent to examine and decide the petitions filed by the Applicants regarding the decisions issued by the Ministry. The said Committee will be headed by a specialized Judge who will be nominated by the Minister of Justice, along with other two specialized members who will be appointed by the Minister of Economy.
Publication of Trademark Application, Renewal & Cancellation
Article 15 of the New Law stipulates the publication of the trademark application when accepted in the Gazette of the Ministry at the expense of the applicant and in accordance with the procedures of the Executive Regulations.
The said Article is silent regarding the necessity of publishing the accepted trademark application in two Arabic daily newspapers issued in the UAE, unlike the Former Law. However, this will be further decided and confirmed in the executive regulations.
Moreover, the Articles related to the publication of renewal (Article 21) and the publication of the cancelled trademark (Article 25) are also silent regarding the necessity of publishing the same in two Arabic daily newspapers issued in the UAE, unlike the Former Law.
It is important to highlight that the other GCC countries are publishing the accepted trademark application, trademark renewal and trademark cancellation in the official Gazette of the Trademark office only and no need to publish the same in local daily newspapers, therefore, UAE may adopt the same approach.
Bad Faith and Prior Use
Alike the Former Law, any person who registered a trademark acquires ownership of it and no dispute against the said trademark shall be admitted if its use is maintained successively from the date of its registration for at least five years without encountering any legal dispute.
However, Article 18/1 of the New Law provides an exception to this article which stipulates that the registrations obtained in bad faith will never become immune to the cancellation action. This adoption is in accordance with Article 6bis, paragraph 3 of the Paris Convention which provides that no time limit shall be fixed for requesting the cancellation or the prohibition of the use of marks registered or used in bad faith2.
Article 18/2 has regulated also the "Prior Use" by giving the right to a prior user of a trademark to request the cancellation of a trademark that was registered by other within 5 years of its registration unless such registration was accepted, expressly or impliedly, by the prior user of the trademark.
The New Law grants the owners temporary protection to protect their trademark used on their products/services during their participation in recognized international exhibitions inside UAE if their marks fulfill the criteria of registering a trademark and in accordance with the Executive Regulations, as provided in Article 23.
Article 24 of the New Law provides that the cancellation actions of a trademark shall be filed with the Trademark Committee of the Ministry of Economy, as opposed to the courts. Therefore, the Ministry is the competent authority for the cancellation requests, which can be filed by the owner of a well-known trademark against a similar trademark within 5 years of its registration, or due to the non-use of a trademark for 5 consecutive years, or against any trademark registered in violation of the Law and its Executive Regulations.
According to the Former Law, a trademark license shall be recorded in the Register, and a license shall have no effect against third parties unless it has been recorded. The Law explicitly requires the recordal of a trademark license agreement with the Trademarks Registry, although non-recordal should not have any effect on the contractual rights and obligations created between the licensor and the licensee.
There were some negative consequences to the "Licensor" for the non-recordal of the license, such as: a trademark can be revoked/cancelled for non-use where that mark is only used under license and that license has not been recorded at the UAE Trade Mark Office in accordance with Former Law. The impact of failing to record is that the use of the mark does not inure to the benefit of the licensor and it would be difficult to prove used readily in the case of any litigation.
The New Law changed the above rule and Article 31 explicitly stipulates that it is not required to record the license agreement with the Ministry.
Geographical Indications "GI"
This Intellectual Property form was not regulated before in the UAE.
Chapter 6 of the New Law (Article 38 to 44) provides that a GI can be a sign or group of signs in any form, including words, geographical names, personal names, numbers, color or colors.
It is prohibited to use any mean in naming or marketing any good in a manner that indicates false origin, causing confusion to the public regarding the said origin. Also, using a GI in a way that considers unfair competition in accordance with Paris Convention, Laws and International Agreements.
Article 40 stipulates that all the GI are enjoying protection in accordance with the New Law as long as the same is protected in the Country of Origin.
There are cases in which GI cannot be registered, as provided in Article 43, as in case the GI causes confusion with a trademark application or with a trademark that has been used in good faith in the country.
The New Law follows the GCC Trademark Law and regulates the Customs seizures, unlike the Former Law. The New Law provides in Chapter 7 that Customs authorities may on their own or on the request of the right owner stop the clearance of a shipment for (20) days, for any products that are in violation of the Law. Article 46 provides exceptions which include; (i) small quantities of a non-commercial nature of goods that are placed in the personal baggage of travelers or are in small parcels, and (ii) goods offered for trade in the markets of the exporting country by the owner of the Trademark or under his consent.
The procedures of Provisional Measures are regulated in Article 47 of the New Law.
The New Law increases the penalties related to trademark infringement significantly. The penalties include imprisonment and fines or either of them. Fines become between AED100,000 to AED1,000,000 for the following crimes, as per Article 49:
- Counterfeiting and imitating a registered trademark in a way causing confusion of the public.
- Using a counterfeit or imitated mark for commercial purposes with knowledge.
- Using in bad faith a trademark owned by another,
- possession of material for the imitation or counterfeit of a registered trademark,
- exporting or importing counterfeit products bearing infringed marks with knowledge.
A fine of AED 50,000 – 200,000 is stipulated in Article 50 for a) selling, offering or possession for selling of counterfeit/ infringing products or b) the use of a trademark that cannot be registered, on its business papers, commercial documents.
It is important to highlight that the New Law is similar to the GCC Unified Trademarks Law in many aspects generally, such as:
- The inclusion of sound and smell trademarks in the definition of a trademark.
- The list of the trademarks that cannot be registered.
- Well-known trademarks Criteria.
- The immunity of trademark if registered and used for 5 years without any challenges to its ownership and cancellation request on prior use.
- Temporary protection of Trademarks during exhibitions
- Recording of the license agreement is optional
- Penalized actions
- Provisional Measures
On the other hand, there are some differences such as the possibility of filing a multi-class application as per the New Law of the UAE, which is not the case in the GCC Trademark Law. Also, filing the cancellation action before the Ministry as per the New Law of the UAE, however, the Court is the competent Authority as per the GCC Law.
FEDERAL LAW CONCERNING NICE CLASSIFICATION
The UAE has officially become a member of Nice Classification in accordance with the new Federal Law no. 156 of the year 2021 that came into force on December 8, 2021.
It is worth mentioning that previously UAE was using Nice Classification in filing the trademark application without being a member thereof.
FEDERAL DECREE CONCERNING MADRID SYSTEM
The UAE has issued the Federal Decree number (67) of the year 2021 for joining the Madrid Protocol on May 19, 2021. The Decree was published in UAE Federal Gazette No. 703, appendix year 61 on May 31, 2021
The Government of UAE deposited its instrument of accession to the Madrid Protocol with WIPO on September 28, 2021, becoming the 109th member of the Madrid System, and the 3rd country in the Gulf Cooperation Council (GCC), alongside Bahrain and Oman to join the Madrid Union. The Protocol came into force on December 28, 20213.
NEW INDUSTRIAL PROPERTY LAW
The UAE has issued Federal Law no. 11 of 2021 ("the Law") concerning the regulation and protection of Industrial Property Rights. The Law revoked the ("Former Law") No. 17 of 2002 on Regulation and Protection of Industrial Property of Patents, Industrial Drawings and Designs. The Law shall be applied to patents, industrial designs, integrated circuits, undisclosed information and utility certificates in the UAE, including free zones. The Law was published in Official Gazette no. 703 on 31 May 2021 and came into force in December 2021.
The Government of Dubai announced on January 14, 2022, that UAE Cabinet approves Executive Regulations of Industrial Property Rights Law, hence, it is expected to be published soon4.
Some notable changes are as follows:
Disclosure of information by the inventor or by a third party who obtained the information directly or indirectly from the inventor shall not affect the obtaining of a patent if this occurred within (12) months before the date of filing the application, as per Article 5(4).5
This is a new article provides that if an invention is disclosed prior to filing the patent application within 12 months, it can still be submitted and meet the novelty condition. Prior to the Law, the Former Law required absolute novelty, except the situation stipulated in Article 3 of the Former Law, which stipulates as follows: "Temporary protection shall be awarded for the inventions, drawings, and designs which are exhibited in local fairs under the terms and conditions set forth by the implementing regulations of this law, taking into account the provisions stated in international agreements, treaties, or conditions of reciprocity".
The Ministry might accept to examine some urgent patent or utility certificate application prior to others, upon the request of the applicants regardless of the dates of filing such applications or the date of examination request as per Article 14, provided that this does not prejudice priority applications in accordance with the criteria and conditions specified by the Executive Regulations.
This article is new and the Executive Regulations will specify the conditions and criteria for this case. This article is important if the UAE decides to join the Patent Prosecution Highway "PPH" agreements. The PPH offers a mechanism by which positive examination results in one office can be submitted to a second office to accelerate patent prosecution in the second office.
It is a new article giving the applicant a possibility to file for one or more divisional applications where an original application contains two or more inventions provided the subject matter is within the scope of the original application, as per Article 16. The divisional application will maintain the same filing date as the original application. The conditions will be defined by the Regulations.
Rights that are not subject to the patent or utility certificate as per Article 22(3):
The combination of two or more medicines for the medical treatment by a licensed pharmacist. This is a newly added exception to infringement.
As per Article 19 of the Former Law, the rights that are not subject to the patent were only: 1) Activities related to the academic research, 2) using of a patent for transportation means being introduced to the UAE on a temporary basis whether such use is intended for the body structure, the engine, or for the spare parts of the said means, considering only the actual needs of the vehicles. Hence, the New Law retains the said two exceptions and added a third exception as explained above.
Can be converted into a patent application as per Article 6. This is a new provision and the Executive Regulations will set out the conditions.
Inventions during the execution of the contract:
This was arranged by the Former Law in Article 9. The New Law (Article 10) added only a new part that considers the application of an invention applied by the worker within two years from the date of leaving the service as if it was during the service. The rights and obligations of the employer and the worker who makes an invention and the compensation entitlement are covered as well by the New Law.
As per Article 43, it shall be new and not violate public order or morals, otherwise, it will not be permitted to use commercially. It is considered new only when it has not been disclosed to the public, prior to the filing date of the application, whether by publication, use, or any other method. However, the design shall not be deemed to have been disclosed to the public whenever such disclosure is made within one year from the date of submitting the application. As per Article 45, the period of protection for the industrial design increased to be (20) years starting from the date of submission of the application. The term of protection in the Former Law was only 10 years.
The New Law set out the conditions of protecting a design in a more comprehensive way than the Former Law, particularly as to the novelty condition.
Integrated Circuit Layout Designs:
The New Law added a chapter (no. 5) for the protection of the Integrated Circuit Layout Designs including the criteria and conditions of protection and the term of protection which is ten (10) years. The Former Law did not include any articles for the same.
The protection of the Undisclosed information was added in Chapter 6 in the New Law and its conditions and scope of protection. The Former Law did not include any articles related to the same.
As per the New Law, there are 3 criteria for the protection of such information as per Article 61: (1) Information which is confidential, in the sense that it is not, as a body or in the precise configuration or assembly of its components, generally known or common among those involved in the industrial art within the scope of which the information falls, (2) Information that has commercial value because it is confidential. (3) Information that depends on the effective measures taken by the person lawfully in control of it, to keep it confidential.
Article 64 of the New Law stipulates the acts which are considered as unfair competition and Article 65 provides the acts which are not considered as unfair competition.
The penalties are significantly increased under the New Law, to provide greater protection for IP owners, to a fine of no less than AED 100,000 (one hundred thousand dirhams) and not more than AED 1,000,000 (One million dirhams) and/or imprisonment. Under the Former Law, these ranged from AED 5,000 up to a maximum of AED 100,000 and/or imprisonment. The penalties, as stated in Article No. 69 of the New Law, apply for anyone who submits documents or provides incorrect or forged information to obtain a patent, a utility certificate, an industrial design, or a layout drawing of an integrated circuit, as well as anyone who imitates an invention or a manufacturing method, or willfully infringes any right protected by this Law. Details about the implementation of the Law are expected to follow in the Executive Regulations.
In conclusion, and pursuant to Article 2, the Law aims to protect industrial property and regulate the procedures for its registration, use, exploitation, and assignment, to ensure support for knowledge and innovation in the state and to enhance the state's competitiveness in the field of industrial property rights by observing best international practices and standards. 6
COPYRIGHT AND NEIGHBORING RIGHTS LAW
The Federal Decree No. 38 of 2021 Concerning Copyright and Neighboring Rights ("New Law"), issued on September 20, 2021, was published on September 26, 2021, and came into effect on January 2, 2022. The New Law replaced Federal Law No. 7 of 2002 ("Former Law"). The New Law consists of Fifty-Three Articles, which enhances the protection to authors of the works and the holders of the neighboring rights, some of the Articles are similar to the Former Law, however, the New Law includes also significant amendments, which includes the following:
Similar to the Former Law, the New Law in Article 5 provides the author and his successor's moral rights, which are not subject to prescription or assignment. Such rights include:
- The right to decide to publish the work for the first time.
- The right to claim paternity of the work.
- The right to object to any alteration of the work if such alteration shall cause distortion or mutilation to the work, or be prejudicial to the reputation of the author.
- The right to withdraw his work from circulation in case serious justifiable reasons occur. The exercise of such right shall be through the competent court. The New Law provides exceptions for smart applications and computer programs and their applications.
Future intellectual production
The disposal of future rights which, under the Former Law was limited to five works. The New Law in Article 15 allows the author to contract as to the number of future works which may be disposed of, provided such disposal does not amount to all of the Author's future works.
Financial exclusive rights for performers
Similar to the Former Law, the New Law provides the Performers shall exclusive financial rights to:
- Transmit and communicate their unfixed performance to the public.
- Fix their performance on sound recordings.
- Reproduce their fixed performance on sound recordings.
The New Law added in Article 17 more rights to the above which include, the right to:
- Rent the original or copies of their performances with the purpose of making a commercial profit,
- Distribute the original or copies of their performances through selling or any other mean of disposition.
- Make their audio recordings proving their performance available to the public by wire or wireless means so that the public can view or access them in any way they wish.
Financial exclusive rights for producers of sound recordings
Article 18 of the New Law listed the exclusive financial rights of the producers of sound recordings as follows:
- Reproduction in any manner.
- Distribute the original or copies of their sound recordings through selling or any other mean of disposition
- Rent the original or copies of their sound recordings with the purpose of making a commercial profit
- Make their sound recordings available to the public in any manner.
- Broadcast and transmit sound recordings in any manner.
- Prohibit any exploitation of their sound recordings in any manner without a license.
Author's economic rights
Unlike the Former Law, the New Law regulates in Article 28 the author's economic rights in relation to third parties, as follows, unless otherwise agreed in writing:
- If the author creates work for the benefit of another person, the copyright belongs to the person in whose favor it was made.
- If the employee or worker, during his work, creates a work related to the activities or works of the employer and with his direct or indirect commission, or uses to reach the creation of this work the experiences, information, tools, machines or materials of the employer placed at his disposal, the author's financial rights shall belong to the employer with taking into account the intellectual effort of the worker.
- If the employee or worker creates a work that is not related to the business of the employer and does not use the employer's expertise, information, tools or raw materials in arriving at this innovation, the author's financial rights shall belong to the employee or worker.
Architectural rights of the author
Similar to the Former Law, the New Law stipulates that buildings may neither be attached nor destructed, changed of their characteristics or confiscated, for the purpose of preserving the architectural rights of the author whose engineering designs, drawings or sketches have been unduly used; without prejudice to his right to fair compensation.
- The New Law in Article 31 added that the copyright in architectural designs is considered the property of the property owner unless expressly agreed otherwise.
- The property owner has the right to make any improvements or changes to the existing building which is subject to the engineering drawings, designs and plans in accordance with Law.
Interim Relief and grievance
The New Law amended the time frame related to filing a case before the Court to be 20 days from the date of issuance of the Interim relief order, instead of 15 days as provided by the Former Law.
Moreover, the period to submit a grievance against the said injunction to the President of the court by the party against whom the injunction is issued is reduced in the New Law to be 15 days instead of 20 days provided by the Former Law.
The New Law stipulates in Article 37 the establishment of a "Grievances Committee for Copyright and Neighboring Rights" which will be competent to examine and decide the petitions filed by the applicants regarding the decisions issued by the Ministry. The said Committee will be headed by a specialized Judge who will be nominated by the Minister of Justice, along with other two specialized members who will be appointed by the Minister of Economy.
The Minister will issue a decision for the nomination of the members of the said committee, its process and related procedures for filing the petitions. The petition term before the said Committee is 30 days from the notification date of the decision.
The New Law added Article 38 which provides that the Customs authorities may on their own or on the request of the right owner stop the clearance of a shipment for (20) days, for any materials that are in violation of the Law.
Similar to the Former Law, the penalties include imprisonment and fines or either of them.
- The New Law increases the fines to be AED 10,000 at least, and AED 100,000 at most, for any person committing one of the following acts without written authorization, as provided in Article 39:
- Trespassing one of the moral or financial rights of the author or the holder of the related rights provided for in this Law, including putting any work, performance, sound recording or broadcast, protected pursuant to this Law, within the reach of the public, either through computers, internet, information and communication networks, or other means or devices.
- Selling, renting or offering for circulation, in any manner, a work, sound recording, or broadcast protected under the provisions of this Law.
Penalties provided for in the present article shall be repeated according to the number of incriminated works, performances, programs or sound recordings.
In case of recurrence, the penalty shall be imprisonment for a minimum period of six months and a fine amounting to AED 100,000 at least and AED 500,000 at most.
- The New Law increases the imprisonment period to six months and the fine to at least AED 100,000 and AED 700,000 at most for any person committing any of the following acts, as provided in Article 40:
- Unduly manufacturing or importing, for the purpose of sale, rental or circulation, any counterfeited work or copies thereof, any apparatuses, equipment, devices or materials specially designed or prepared for defrauding protection or technology used by the author or holder of related right for transmitting, offering for circulation, regulating or managing such rights; or preserving a specific standard of purity of the copies.
- Unduly disrupting or impairing any technical protection or electronic data aiming at regulating and managing the rights prescribed by this Law.
- Downloading or storing in the computer any copy of the computer program or applications thereof or databases, without obtaining a license from the author or right holder or successors thereof.
In case of recurrence, the penalty shall be imprisonment for a minimum period of nine months and a fine amounting to AED 500,000 at least and one million at most.
- It is important to highlight also that the New Law increases the penalty for any person using a computer program or applications thereof or smart applications or databases, without obtaining in advance a license from the author or successors thereto, shall be sentenced to a fine amounting to AED 30,000 at least and AED 100,000 at most for each program, application or database.
In case of recurrence, the penalty shall be a fine amounting to AED 100,000 at least and one million at most.
Similar to the Former Law, Article 41 of the New Law provides that if the offense has been committed in the name or to the benefit of a juridical person, or a commercial or vocational establishment, the Court may decide to close it for a period not exceeding three months.
The New Law added Article 46 which stipulates that national carriers, including planes, ships and trains, shall abide by the New Law provisions.
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.