The Cabinet of Ministers Resolution No. (57) of 2022 regarding the Executive Regulations of Federal Law No. (36) of 2021 regarding the Trademark Law was published on June 15, 2022, Gazette no. 729/52 and will come into force on June 16, 2022.
The Executive regulations (hereinafter referred to as “ER”) include 27 Articles and its provisions superseded any earlier or conflicting legal provisions.
Some notable changes are as follows:
- Multi-class application
Article 2 of the ER stipulates that a trademark may be filed for one class or multiple classes by the international classification of goods and services and the registration fees vary when the application is for multiple classes. 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 in the Ministry's online portal and the official fees are not yet reflected.
- Trade License for UAE Applicants
The New Law stipulates in Article 6 the right of any person or entity to file its trademark and the requirement to submit a trade license to allow the registration of a trademark in the name of a local person/entity was removed in accordance with Article 4 of the ER.
- Power of Attorney
Article 4 of the ER provides that the original legalized POA, translated into Arabic is required for filing a trademark application. Noting that as per the current practice in the UAE, the Ministry allows filing the trademark application with a simply signed POA along with an undertaking to file the legalized and attested POA within 30 days from the date the application is filed, no official fees will be imposed for filing the late POA.
- Expansion of protection scope
Article 4 of the ER provides that MP3 files and musical notes shall be submitted for voice marks, and chemical formula illustrations are required for smell marks.
It is important to highlight that the definition of a trademark in Article 2 of the New Trademark Law 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.
- Appeal of decision related to an opposition
Article 7 of the ER extends the period allowed for appealing the Trademark Office's decision on opposition to the Trademark Committee to 30 days, which was 15 days only as per the Former Law.
- 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
Article 6 of the ER explicitly reflects that the publication of the accepted trademarks shall take place in the official Gazette of the Ministry, hence, confirming the elimination of the requirement to publish the accepted trademarks in local daily newspapers. For renewal and cancellation as well, there is no more requirement to publish the same in local daily newspapers.
- Trademark Renewal
Article 11 of the ER extends the renewal grace period for trademarks to 6 months after expiration. The grace period used to be 3 months only as per the Former Law.
- Cancellation Action
Article 24 of the New Law and Article 14 of the ER 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.
The ER provides that a time frame of 90 days for the Trademark Ministry to issue a decision from the filing date of the complaint, as provided in Article 14 (3).
Article 31 of the New Law explicitly stipulates that it is not required to record the license agreement with the Ministry, unlike the Former Law, which stipulates that 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 ER stipulates in article 18 (1) some conditions for the License agreement which shall be executed in writing and duly notarized, legalized and translated into Arabic in case it is executed in any other language.
- Geographical Indications "GI"
This Intellectual Property form was not regulated before in the UAE. The New Law regulates the GI in chapter 6 in the provisions from Articles 38 to 44.
Article 23 of the ER provides that an application for GI registration shall be submitted by one or more legal persons on the form prepared for it and shall include the following:
- The name of the applicant (legal person), its legal form and the purpose of establishment.
- The nationality and domicile of the applicant and the type of products.
- Image and description of the GI.
- Data related to the GI, explaining in detail the advantages and characteristics of the GI and its characteristics related to the geographical area, from an accredited entity.
- A duly certified and translated copy of the GI Registration Certificate in the country of origin, if the application for a GI is submitted from outside the country.
- A duly legalized and translated POA if the application is submitted by the agent of the applicant.
It is important to highlight that Article 40 of the New Law 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 of the New Law, 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.
- Customs seizures
The New Law follows the GCC Trademark Law and regulates Customs seizures, unlike the Former Law. Article 24 of the ER regulates the procedures to be taken from the trademark owner by filing a written request to the Customs Authority to stop the customs release of counterfeit or forged goods or goods bearing a similar mark to his registered trademark, provided that the complaint is supported by the necessary evidence and information.
The trademark owner shall file a case before the competent court and notify the competent authority within a period not exceeding (10) ten working days from the date of notification of the decision to stop the customs release of these goods, otherwise, the decision shall be considered void unless this authority or court decides to extend this period in cases that it estimates for a period not exceeding (10) ten other working days.
It is worth mentioning that Article 46 of the New Law provides exceptions to the above 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.
- International Trademark Applications
Article 25 of the ER stipulates that Madrid Protocol's executive regulations and amendments shall apply to international registration applications submitted in accordance with the Madrid protocol regarding international Trademark registration.
It is important to point out that the New Law provides heavy Penalties for infringements and we believe that this can be used to great effect against the infringers. The penalized actions in accordance with Articles 49 and 50 of the New Law include:
- Counterfeiting and imitating a registered trademark in a way causing confusion to the public for similar or related goods/services.
- Using a counterfeit or imitated mark for commercial purposes with knowledge.
- Using in bad faith a trademark owned by another on its products/services.
- Possession of material for the imitation or counterfeit of a registered trademark,
- Exporting or importing counterfeit products bearing infringed marks with knowledge.
- Selling, offering or possession for selling of counterfeit/ infringing products.
- Using a trademark that cannot be registered, on its business papers, or commercial documents.
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.