In keeping with the UAE's strategic objectives and improving its legislative landscape to meet all modernization criteria, the UAE has endeavoured to improve and enhance all IP legislations over the course of the past two years. The UAE marked its 50-year anniversary with the amendment of many of its laws, all with a focus of increasing the internationalisation of the UAE. In respect of IP particularly, three new laws were published late last year for trademarks, copyright, patents and industrial designs as shown below:
- Federal Decree- Law No. 36/2021 on Trademarks
- Federal Decree-Law No. 38/2021 on Copyrights and Neighbouring Rights
- Federal Law No. (11) of 2021 regarding the Regulation and Protection of Industrial Property Rights
The above are just part of many other regulations that were enacted or amended in 2021 and 2022 to expand in IP rights protection and deal with unregulated areas in the past, such as unfair competition, cyberlaw...etc.
The UAE Cabinet has also published implementing regulations to be read alongside each law which sets out procedural details of the laws and fills in the gaps where the law is silent or briefly regulated the same.
Hot topics in intellectual property in the UAE include the Metaverse which has and will challenge the existing IP frameworks worldwide. The UAE aims to turn Dubai into a global hub for the metaverse and as such, the government has invested in its infrastructure. This will mean that brands must decide how they will utilise their brands on the metaverse and use the technology to reach a new consumer base. Other hot topics include the world cup as the UAE has established itself as an official fan hub and portal into Qatar and many fans have chosen to stay in Dubai as opposed to Qatar. This has creating many marketing and branding opportunities across the middle east and as such brands have invested in securing protection in the region.
2. Legal & Regulatory updates from 2022
|Legal & Regulatory Update 1: Cabinet Decision No.
On Executive Regulations of the Federal Decree- Law No. 36/2021 on Trademarks
Overview of the update
The implementing regulations for Federal Decree- Law No. 36/2021
on Trademarks were issued on 22 June 2022, supplementing and
refining the procedural framework for trademark matters.
What does this change?
The implementing regulations and the Trademark Law itself have updated and modernised the relevant provisions in the UAE. The UAE set out to strengthen its position as a hub of innovation and as such, the IP laws were subsequently revised.
Trade License for UAE Applicants:
decisionsrelated to Opposition
Article (11/1) of the Cabinet Decision No. 57/2022 extended the grace period for renewal of trademark registration to (6) six months after expiration. The renewal grace period under the previous Trademarks Law & Implementing Regulation was 3 months.
Temporaryprotection of trademark:
Articles (12) and (13) of the Cabinet Decision No. 57/2022 provide for the temporary protection of the trademarks used in Exhibitions and assists owners of temporary marks to register their marks and participate freely in temporary events and exhibitions. The foreign participants in official international exhibitions and officially recognized exhibitions inside the UAE have right to submit a request for temporary protection of their trademarks before the Temporary Protection Register during the exhibition period, at least one month before the opening of the exhibition. The Ministry of Economy will issues a certificate of temporary protection regarding the trademark used int eh Exhibition for the period of Exhibition.
Trademark applicants can record assignment and transfer of
trademark ownership regarding pending applications under the new
Trademarks Law No. 36 of 2021. The Cabinet Decision No. 57/2022
outlined in Article (15) the conditions or details that shall be
included in the Assignment deed in additions to the formalities
that shall be completed for the assignment deeds to be acceptable
by the Trademarks Office.
Attachment on Trademarks:
Recordal of license agreements:
Geographical indications (GI):
What is the impact / implications on
The trademark practices in the UAE are significantly more streamlined and in line with international practices. This improves the ease of doing business in the UAE for brand owners and assists
Will there be any further developments on this in 2023?
The Law and implementing regulations provide for multiclass
applications and set out the procedural framework for such.
However, in practice this is still not an option for trademark
owners upon filing. Nevertheless, based on the provisions, we
expect the UAE will become a multiclass filing system and we this
change should occur within the next year.
|Legal & Regulatory Update
2:Cabinet Decision No. 47/2022
On the Implementing Regulation of Federal Decree-LawNo. 38/2021 on Copyrights and Neighbouring Rights
|Overview ofthe update
The implementing regulations for Federal Decree-Law No. 38/2021 came into force on 11 May 2022. These regulations further refine the copyright registration, importation and license procedures in the UAE. They also prescribe the requirements and procedures for the establishment of a Collective Management Organisation.
What doesthis change?
The formation of collective management organisations has long been advocated for the UAE and was finally legalised under the new law. The implementing regulations set out the procedural framework for organisations including the requirements for a permit and the operational guidelines.
The law and implementing regulations establishes a grievance committee for copyright claims which should improve the process by which copyright issues are managed and handled locally.Smart Applications:
The New Copyright Law No. 37 of 2021 added a new copyright-protected work to paragraph (2) of Article (2) (namely, Smart Applications). The amended paragraph (2) of Article (2) will cover"Smart Applications, computer software and its applications,databases and similar works defined in a decision to be issued by the Minister of Economy". The interpretation of Article (2/2) of the 2002 Law and its application in judicial practice has been widely discussed in disputes related to mobile and/or smart applications. Therefore, the new Copyright Law provides a response to the debates brought about by the technology development in addition that it provides a more precise distinction between compute programs and smart applications. It comes in line with the UAE government to lead the region and introduce a very innovative provision in its IP legislations and assert the country's strategy to build a knowledge and technology-based economy. Eventually, the provisions of the Copyright Law - which are related to computer programs and the applications related to computer programs - are applicable on smart applications under the new law.
Assignment of FutureCopyrights:
Under Article (15) of the new Copyright Law No. 38 of 2021 and Article (18/2) of Cabinet Decision No. 47/2022, a party can contract to assign up to ten future works. Any additional assignments in excess of this number are void.
Assigning the benefit of a Copyright
Protecting Privacy of Photographyand Audio/Visual Recordings Subjects:
Besides photographs, the new Copyright law grants protection to
individuals who appear in audio or visual recordings. The New Law
provides that a photograph or audio recording or visual recording
featuring an individual may not be kept, exhibited or published or
distributed without the consent of the individual appearing in the
photograph or recording. There are exceptions to this general rule
if the photograph or recording was made during public events or
public activities that are made available to public in a public
place or if the publication was authorized by the public
authorities as a service for public interest. However, in each
case, the exhibition or circulation of the photograph or recording
must not prejudice the position of the person who is the subject of
the photograph or recording.
What is the impact /implications on
The Default Ownership of Copyrightin Architectural Designs
Architectural Designs have been addressed practically in the new Copyright law. Work for hire is being explicitly concluded from delivering such works. The new Copyright Law introduced new provisions that state that ownership of copyright in architectural designs vests in the owner of the building and not the original person who created the Architectural Design, subject to any agreement to the contrary. This is indeed a very important game changer to the industry which will set essential limitation on the architectural works, ability to reutilize their designs and/or enforce their rights against third parties. Furthermore, the new Copyright Law permitted the owner of the building to modify or alter or improve the building which is subject of the copyrighted architectural designs.
Exceptions to the Default Rulerelated to Ownership of the Copyright Work:
Under the previous Copyright Law of 2002 Law, the default rule
is that ownership of copyright in a work initially vests in the
author who created the work, even if the works are commissioned by
a client, and therefore, clients used to modify this position
through signing contracts hereby the creator assign its economic
rights in the copyright to clients.
Under the New Law, and subject to any agreement to the contrary, the employee will remain the default owner of the copyright in the work created during his employment if (1) the work is not related to the scope of his employment and not related to the business or activities of the employer and (2) the work is created or achieved without utilizing the employer's documents, experiences and resources.
|Will there be any furtherdevelopments
on this in 2023?
Since the new law was published in 2021 it is not expected that there will be any new legislation in 2023.
|Legal & Regulatory Update 3: Cabinet Resolution No. 6/2022 regarding the Executive Regulationsof Federal Law No. (11) of 2021 regarding the Regulation and Protection of Industrial Property Rights|
|Overview of the update
The new law came into effect in November 2021 followed by the implementing regulations which were issued on 10 February 2022. The new law and implementing regulations update the legal framework that applies to patents and industrial designs, with changes to the preparation, prosecution and enforcement of patents and designs.
What doesthis change?
The implementing regulations set out the conditions for converting a utility certificate into a patent and set out the process of examination, the process of compulsory license requests and the process for registration of layout design for integrated circuits.
The new law has significantly increased the penalties associated with patent infringement and Article 69 of the new law prescribes that:
"Without prejudice to any severer penalty stipulated in any other law, he shall be punished by imprisonment and a fine of no less than AED 100,000 (one hundred thousand dirhams) and not more than AED 1,000,000 (One million dirhams)" or either of these two penalties 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"
The amendments are designed to enhance the UAE's competitiveness in the field of industrial property rights by observing best international practices and standards.
Updated Requirements for filingPatent and Design Applications:
The key change on the practice of the International Center for Patent Registration (ICRP) at the Ministry of Economy - following the issuance of the new Industrial Property Law No. 11 of 2021 and Cabinet Decision No. 6 /2022 – is easing the filing and examination process through allowing the applicants to submit notarized copies of the required documents (namely, Power of Attorney, Assignment Deed from the inventors to applicant, an extract from the commercial register) while legalization of such documents up to the UAE Consulate is no longer required.
Further, the supporting documents no longer need to be translated into Arabic unless requested by the International Center for Patent Registration. Therefore, the filing process is no more time consuming and costly.
Limitation of numberof claims:
Patent applications must be limited to 50 claims while utility models must be limited to 10 claims. Further, the new law and implementing regulation allow for post-grant amendments if the scope of the claims remains with the allowed scope.
|What is the impact/ implications on
The changes will allow inventors and applicants to obtain protection for their intellectual property in the UAE with more ease and certainty of process. The accelerated examinations will improve the availability of protection.
Will there be any furtherdevelopments
on this in 2023?
3.Thoughts & expectations for what is to come in 2023
The UAE is increasingly becoming an international player and will continue to develop and substantiate its legal framework to attract investment. Dubai recently launched the Dubai Metaverse Strategy which aims to turn Dubai into one of the worlds top metaverse economies which envisions the creation of 40,000 jobs. Developments in this area are likely to require new legislation and enhancements to keep up with the pace of technology.
In respect of trademarks, there is the expectation that the move from handling cancellation actions under the local courts to the trademark office will increase the availability and likelihood of trademark cancellation actions. As soon as the logistics and availability of service becomes clearer and fully functional, we expect that brand owners will begin to challenge existing brands more frequently and it will be interesting to see how the trademark office responds and reaches its decisions.
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.