1. Relevant Authorities and Legislation
1.1 What is the relevant trade mark authority in your jurisdiction?
The UAE Federal Ministry of Economy is the authority responsible for trade mark registration, prosecution services, opposition and also oversees administrative infringement mandates in the UAE. In each Emirate, there is an administrative authority, such as Economic Department or Customs, that supervises trade mark enforcement tasks.
1.2 What is the relevant trade mark legislation in your jurisdiction?
The relevant legislation is the UAE Federal Law No. 37 of 1992 as amended by the UAE Federal Law No. 19 of 200 and also Law No. 8 of 2002 (the "UAE Trade Mark Law"). There is also the Ministerial decision No. 6 of 1993 in relation to implementing regulations for Law No. 37 of 1992 which was followed by amendments in 1995 and 2001 (the "UAE Trade Mark Implementing Regulations").
2. Application for a Trade Mark
2.1 What can be registered as a trade mark?
As per Article 2 of the UAE Trade Mark Law, a trade mark can be a distinguished form of a name, word, signature, letter, figure, drawing, symbol, title, tax stamp, seal, picture, inscription, advertisement, pack or any other mark or group of marks.
3D shapes, non-traditional trade marks and trade dress are also registerable in the UAE according to the current practice of the UAE Trade Mark Office ("TMO") examiners. In many examples, we have seen some distinctive designs being registered as marks in the UAE.
The current system of the UAE TMO does not allow or provide mechanisms to register smell or sound marks.
2.2 What cannot be registered as a trade mark?
Article 3 of the UAE Trade Mark Law clearly sets out what cannot be registered as a trade mark, as follows:
- signs without any distinctive character or property or which use common names of goods, products and services or the ordinary drawings or pictures of goods and products;
- signs that offend public morals or which are contrary to public order;
- signs using or imitating public symbols, flags and other logos of the UAE or any Arab or international organisation or any foreign country, the emblem of the Red Crescent or the Red Cross or any imitations;
- identical or similar religious signs or symbols;
- geographical names that can cause confusion about the origin or source of the trade mark, products or services;
- the name, title, photograph or logo of a third party unless consent is obtained;
- particulars of degrees of honour which do not prove that the applicant is legally entitled thereto;
- signs which may mislead the public or contain false statements or descriptions;
- trade marks owned by individuals or legal entities with which any deal is prohibited;
- signs which will result in the loss of value of other products or services;
- signs that contain the words "privilege", "privileged", "registered", "registered drawings", "copyright", "imitation is forgery", or other similar words and phrases;
- national and foreign medals, coins or bank notes; and
- trade marks which are a translation of an existing trade mark or a well-known trade mark so long as the same will cause likelihood of confusion among consumers between the goods/services offered by owners of both marks.
2.3 What information is needed to register a trade mark?
In order to register a trade mark in the UAE, the applicant needs to present the following:
- Duly signed, notarised and legalised Power of Attorney ("PoA") translated to Arabic if it is prepared in a foreign language. The PoA will need to be delegated to a registered trade mark attorney or firm at the UAE Ministry of Economy/Trade Mark Office.
- A clear colour copy of the trade mark to be applied and registered.
- A copy of the applicant's commercial licence if it is a legal entity.
- Full name and address of the applicant.
- Specifications and selection of services/goods according to the International Nice Classifications 10th Edition. Claiming class heading is allowed.
Locally based companies in the UAE can directly file their trade mark applications to the UAE Trade Mark Office.
2.4 What is the general procedure for trade mark registration?
All documents mentioned under question 2.3 must be submitted to the Ministry of Economy electronically to the Trade Mark Office. Once all the documents are submitted, the trade mark examiner will issue a decision to accept the mark or reject it. The acceptance is issued either without any conditions or based on certain conditions, i.e. disclaimer, etc. Once the mark is accepted, it proceeds to publication in the Official Gazette which is issued on a monthly basis. The opposition period is 30 days and once this period lapses without any opposition, the mark matures for registration.
2.5 How is a trade mark adequately represented?
A trade mark must be distinguished, meet criteria of registrability and comply with criteria as listed in Articles 2 and 3 of the UAE Trade Mark Law.
The trade mark can either be filed with claiming colours or in black and white. If no colour is claimed and the mark is filed in black and white, then it gets protection in all colours.
2.6 How are goods and services described?
The UAE utilises the Nice Classification System 10th Edition and therefore follows the standard description for all 45 classes. It is important to note that the UAE Ministry of Economy is flexible to accept alteration of listed services and goods so long as the claimed services/goods fall within the correct classification in accordance with the 10th edition of the Nice Classification.
2.7 To the extent 'exotic' or unusual trade marks can be filed in your jurisdiction, are there any special measures required to file them with the relevant trade mark authority?
The UAE Ministry of Economy accepts non-traditional trade mark applications and has issued many approvals and registration certificates for the same. The application is normally filed similarly to other word marks or device marks, i.e. same requirements, fees, measures, etc. Applicants are advised to clearly explain any distinctive features in the applied unusual marks to ease the issuance of acceptance decisions.
2.8 Is proof of use required for trade mark registrations and/or renewal purposes?
No proof of use is required at time of filing, registration or renewal. Proof of use is only required in cancellation for non-use, dispute of ownership and proof of infringement claims as needed.
2.9 What territories (including dependents, colonies, etc.) are or can be covered by a trade mark in your jurisdiction?
The UAE Ministry of Economy only covers the registration of trade marks in the seven Emirates which comprise the UAE: Abu Dhabi; Dubai; Sharjah; Ajman; Umm Al Quwain; Ras Al Khaimah; and Fujairah.
2.10 Who can own a trade mark in your jurisdiction?
A trade mark can be owned either by an individual or by a legal entity.
2.11 Can a trade mark acquire distinctive character through use?
Yes. The use of a trade mark is a very important element in determining the legitimate owner of a trade mark. A prior user of a trade mark can, in theory, challenge a registered trade mark that was filed and registered later so long as this challenge occurs within five years from the date of registration.
The use of a trade mark builds goodwill for the same and creates less confusion among consumers. Many commonly used terms and descriptive marks have acquired distinctiveness in the UAE after accomplishing wide use.
2.12 How long on average does registration take?
As of January 2019, the process of registering trade marks has been expedited by examiners. Smooth registration should take less than 4–5 months from the date of filing, publication and registration. Also, the UAE TMO imposes fines against applicants that fail to settle official fees for publication and/or registration in a timely manner.
2.13 What is the average cost of obtaining a trade mark in your jurisdiction?
The official fees and disbursements to register a trade mark under one class in the UAE is AED 9,400, i.e. USD 2,550.
The cost of the UAE Ministry of Economy fees for registering was reduced in 2019. However, there are still no multi-class applications available and therefore each class should be filed in separate applications and hence the above charges multiply accordingly. In addition, there are no extra charges on filing coloured or device marks as the same official fees apply on all types of marks.
Professional fees are applicable according to service providers but the same should range between AED 2,500 and 5,000 (USD 670–1,350) depending on the level of service provider. VAT is added when applicable.
2.14 Is there more than one route to obtaining a registration in your jurisdiction?
There is only one route to register a trade mark in the UAE, which is through the UAE Trade Mark Office at the Ministry of Economy.
The recording of marks at local customs authorities is also available but this is purely for enforcement and border control purposes.
2.15 Is a Power of Attorney needed?
A Power of Attorney duly authenticated as explained above is required to be represented by the applicant before the UAE Ministry of Economy. Only local individuals and/or entities in the UAE can file directly before the UAE Trade Mark Office.
2.16 If so, does a Power of Attorney require notarisation and/or legalisation?
Power of Attorney executed in the UAE must be signed before a UAE Public Notary.
Power of Attorney executed in the UAE must be legalised before the Ministry of Foreign Affairs and the UAE Embassy/or Consulate in the country of signature, and then locally attested before the UAE Ministry of Foreign Affairs in the UAE.
2.17 How is priority claimed?
The UAE is a signatory to the Paris Convention and it is therefore possible to claim priority. An application must be filed with the UAE Ministry of Economy and a copy of the application details and receipts from the country of origin should be provided. For applications filed online and available to the examiner, such as USPTO or EUIPO, a simple copy of the application will work. For other countries where online records are not available, a certified copy of a priority application translated into Arabic could be required. The examiner is flexible with this formality and helps applicants to claim priority so long as the application is supported with adequately authenticated documents.
No legalisation for priority documents is required.
2.18 Does your jurisdiction recognise Collective or Certification marks?
Yes, both these marks are recognised in the UAE and can be applied for registration accordingly.
3. Absolute Grounds for Refusal
3.1 What are the absolute grounds for refusal of registration?
Any application to register a trade mark that comprises any of the elements or restrictions stipulated under Articles 3–4 of the UAE Trade Mark Law will be subject to provisional refusal.
3.2 What are the ways to overcome an absolute grounds objection?
If the registration of a trade mark is rejected or accepted subject to conditions, the applicant may file an appeal, or grievance, to challenge such decision. The appeal of such rejection can be filed within 30 days of receipt of the same to the Trade Mark Appeal Committee, a body created by the UAE Trade Mark Law (the "Trade Mark Committee").
The grievance should include grounds challenging this decision demonstrating that the trade mark examiner erred with his finding and classification of the mark.
3.3 What is the right of appeal from a decision of refusal of registration from the Intellectual Property Office?
An applicant has a statutory right to appeal a decision issued by the Trade Mark Committee before the Competent Federal Court within 60 days in accordance with Article 12 of the UAE Trade Mark Law.
3.4 What is the route of appeal?
The appeal route is as follows:
- the Trade Mark Committee (within 30 days from issuing the decision);
- the UAE Federal First Instance Court (within 30 days from issuing the decision by the Trade Mark Committee);
- the UAE Federal Appeal Court (within 30 days from issuing the decision by the First Instance Court); and
- the UAE Federal Supreme Court (within 60 days from issuing the decision by the Appeal Court).
4. Relative Grounds for Refusal
4.1 What are the relative grounds for refusal of registration?
Relative refusal of a trade mark registration will usually occur when a new application conflicts with a pre-existing registered mark and/or an earlier filed mark.
4.2 Are there ways to overcome a relative grounds objection?
Yes. An agreement with the prior owner or a consent letter will help to get an approval by the examiner. An appeal of any refusal decision on relative grounds is also available as explained above on absolute grounds. The owner of a new application should show that there is no similarity between the marks and/or likelihood of confusion among the public between the marks in question.
The UAE trade mark law does not make any distinction to overcome the refusal decisions on absolute and/or relative grounds.
4.3 What is the right of appeal from a decision of refusal of registration from the Intellectual Property Office?
This is the same as the answer to question 3.3.
An applicant has the right of appeal to a trade mark registration that is rejected as explained above for absolute grounds.
4.4 What is the route of appeal?
This is the same as the answer to question 3.4.
The appeal route is as follows:
- Trade Mark Committee (within 30 days from issuing the decision);
- UAE Federal First Instance Court (within 30 days from issuing the decision by Trade Mark Committee);
- UAE Federal Appeal Court (within 30 days from issuing the decision by first instance court decision); and
- UAE Federal Supreme Court (within 60 days from issuing the decision by Appeal Court).
5.1 On what grounds can a trade mark be opposed?
Opposition is allowed within 30 days from the publication of a trade mark after the acceptance decision.
Any interested party has the right to file opposition and claim prior rights or conflict with pre-existing marks on the published mark. The applicant of such opposed marks should defend its application and show legitimacy to register its trade mark by way of earlier creation, use and/or unlikelihood of confusion between its trade mark and the rights claimed by an opponent(s).
5.2 Who can oppose the registration of a trade mark in your jurisdiction?
Any person or entity may oppose a trade mark registration if it can prove legitimacy for its claims. In formality, this is possible for both individuals and/or entities subject to payment of official fees to lodge the opposition.
Ownership of pre-existing marks and acquired official registration or pending application is not a prerequisite to lodge an opposition.
5.3 What is the procedure for opposition?
To oppose a trade mark registration, an official fee of AED 10,000, i.e. USD 2,700, should be settled by the opponent. The same is not refundable even if opposition is granted and the application is rejected.
A notice of opposition can be filed and the same will be found admissible. Thereafter, a detailed grounds of opposition memorandum along with supportive dockets/evidences can be filed at any stage prior to or at the hearing held by the Trade Mark Office, if any.
Once a notice of opposition is filed, the Trade Mark Office notifies the applicant of the same. The applicant will have 30 days to respond and counter-oppose; otherwise, the opposition will be found admissible by default and the application will be rejected.
6.1 What happens when a trade mark is granted registration?
When a trade mark matures for registration, the applicant or its attorney will have to settle the registration fees within 30 days. The fees are AED 6,700, i.e. USD 1,820, and any delay in settling the registration fees will impose an administrative fine of AED 1,000/per month.
Once registration fees are settled, an electronic registration certificate is issued in the local Arabic language and made available to the applicant's attorney.
6.2 From which date following application do an applicant's trade mark rights commence?
An applicant's trade mark rights begin on the date of filing the application so long as the trade mark is registered.
6.3 What is the term of a trade mark?
A trade mark is registered for a 10-year period.
6.4 How is a trade mark renewed?
To renew a trade mark in the UAE, a valid Power of Attorney must be submitted, along with a copy of the expiring trade mark registration certificate.
The renewal process is simple and straightforward. Official fees are identical to registration fees, i.e. AED 6,700, i.e. USD 1,820. It is advisable to complete renewal six months prior to expiration, but the Trade Mark Office, subject to additional fees, may allow late renewal for up to three months following the expiration date.
The mark will lapse if the renewal is not completed in a timely manner.
7. Registrable Transactions
7.1 Can an individual register the assignment of a trade mark?
Yes. An assignment can be registered with the UAE Ministry of Economy in the Trade Mark Register and must be presented in a written format signed by both parties.
The deed of assignment requires to be notarised in the UAE and/or legalised by the UAE Consulate/Embassy if executed overseas.
7.2 Are there different types of assignment?
Deed of assignment can be very detailed or very brief. It should include the basic info about the assigned marks, names and address of parties and the total amount of assignment. The amount can be for recordal purposes.
7.3 Can an individual register the licensing of a trade mark?
Yes, the recordal of licence for trade mark is possible and available in the UAE Ministry of Economy.
7.4 Are there different types of licence?
Yes. These include the following:
- Exclusive licence
There is no statutory definition for this or any other term. Therefore, the definition is based on contractual clauses. It is known that the exclusive licence means that the parties have agreed that no other party can exploit the relevant intellectual property rights, except the licensee. The licensor is also excluded from exploiting the intellectual property rights in the agreed territory so long as this is explicitly mentioned in the agreement. If no such exclusion applies, the proprietors of IP rights will remain eligible to use the right in the agreed territory.
- Non-exclusive licence
The non-exclusive licence means that the licensor granted the licensee the right to exploit the intellectual property rights on a non-exclusive basis. Accordingly, the licensor can exploit the same intellectual property rights and/or allow other licensees to exploit the same intellectual property rights in the agreed territory.
- Sole licence
The sole licence means that the licence is exclusive, and the licensor shall not grant other licences or sub-licences to other parties, however, the licensor reserves the rights to exploit the intellectual property rights itself.
7.5 Can a trade mark licensee sue for infringement?
Yes, if the licensee has the right to enforce the trade mark from the trade mark owner and the licence is officially recorded. An unrecorded licence does not have an effect against third parties and therefore, there is a tricky statutory limitation to enforce such rights against third parties.
7.6 Are quality control clauses necessary in a licence?
Under UAE Trade Mark Law, quality control is one of the most possible and accepted clauses to be included in a licence agreement. However, it is not a mandatory requirement for both the licensee or licensor.
Naked licence is not one of the available causes of action in the UAE to invalidate or cancel a trade mark. Hence, a licence with no quality control provisions does not undermine the trade mark owner's rights on their marks in the UAE.
7.7 Can an individual register a security interest under a trade mark?
Yes, in accordance with the UAE Trade Mark Law. However, the practice reveals many difficulties in this regard.
7.8 Are there different types of security interest?
Mortgage, seizure and assignment of trade marks are possible according to Article 27 of the UAE Trade Mark Law.
8.1 What are the grounds for revocation of a trade mark?
A trade mark can be revoked by way of a cancellation action. This can be based on a unilateral decision by the UAE Trade Mark Office if the mark was registered in error and based on official notification to the applicant. It can also be cancelled based on a claim by a third party so long as the mark is vulnerable for cancellation, i.e. five years from the date of registration.
8.2 What is the procedure for revocation of a trade mark?
This can be filed before the UAE Trade Mark Office in accordance with Article 20 of the UAE Trade Mark Law.
It can also be lodged directly to the competent court to seek a court order to cancel the trade mark in accordance with Article 21.
8.3 Who can commence revocation proceedings?
Any interested party can lodge the revocation, such as:
- UAE Trade Mark Office;
- owner of pre-existing marks, registered and/or used;
- prior user of trade mark;
- owner of well-known trade mark(s);
- employers against employees that misused their position;
- partners; and
- owner of pre-existing trade names.
8.4 What grounds of defence can be raised to a revocation action?
The owner of marks that face a revocation claim can always claim good faith in applying, using and registering the trade mark. It can also claim that no confusion to consumers existS from the mark(s) in question.
Owners of marks that are registered for more than five years can seek dismissal on formality since the marks become invulnerable according to Article 17 of the UAE Trade Mark Law.
8.5 What is the route of appeal from a decision of revocation?
The appeal route for revocation decisions is as follows:
- UAE Federal First Instance Court (within 30 days from issuing the decision by Trade Mark Office to revoke a mark); and
- UAE Appeal Court (within 30 days from issuing the decision by the First Instance Court if revocation is issued by the Competent Civil Court).
9.1 What are the grounds for invalidity of a trade mark?
This is the same as the revocation clauses. There is no distinction between invalidity and revocation in the UAE Trade Mark Law.
9.2 What is the procedure for invalidation of a trade mark?
This is the same as the revocation clauses. There is no distinction between invalidity and revocation in the UAE Trade Mark Law.
9.3 Who can commence invalidation proceedings?
This is the same as the revocation clauses. There is no distinction between invalidity and revocation in the UAE Trade Mark Law.
9.4 What grounds of defence can be raised to an invalidation action?
9.5 What is the route of appeal from a decision of invalidity?
10. Trade Mark Enforcement
10.1 How and before what tribunals can a trade mark be enforced against an infringer?
An infringement can be filed before the UAE Ministry of Economy, Economic Department, which is the local administrative authority in most Emirates, Local Customs Authorities in most Emirates, or before the UAE Civil Court. In some occasions and when infringement is obvious, police action and the criminal route is also available. Generally speaking, the criminal route is available solely in counterfeiting cases.
10.2 What are the key pre-trial procedural stages and how long does it generally take for proceedings to reach trial from commencement?
A complaint of an infringing trade mark can be filed before different law enforcement agencies (i.e. administrative, civil and criminal proceedings). Being a civil law system, jury trials are not applicable in the UAE. However, trial hearings, or commonly known as court hearings, before judges occur and are available for parties to present their claims and/or defences.
In civil actions, the magistrate or managerial stages receive and review parties' submissions, complete the summons and service to defendants, compile the case file with submitted dockets and thereafter transfer the same to the civil court judge for hearings. This normally takes a 1–3 month period depending on the notification and service of summons competition.
Another option for pretrial is the filing of a request to appoint an expert at the settlement centre for an initial opinion and the said expert will receive parties' submissions, prepare an initial report and submit the same in the case. Thereafter, the parties can decide to file a fresh claim before the civil court for hearings and for a ruling on claims. The initial pretrial period for this optional route could range between 2–6 months but it is an optional route for the plaintiff to pursue.
Criminal proceedings usually take 3–6 months to complete the investigation, laboratory assessment, sessions with the public prosecution office and administrative transfer of the file before proceeding to trial stage.
No trial or hearing before the judiciary authority is available in administrative actions. The law enforcement agency, i.e. Customs and/or the Economic Department, issues its decision and executes it administratively without referring it to the court.
10.3 Are (i) preliminary and (ii) final injunctions available and if so on what basis in each case?
Both preliminary and final injunctions, also commonly known in the UAE as "attachment orders", are available and can be filed before the civil court in civil actions. Later, the civil court rules for permanent injunction and destruction of illegal products, i.e. counterfeit or infringing products.
Police obtain an arrest and seizure warrant from the public prosecution office in criminal proceedings. Later, the criminal court rules for permanent injunction and destruction of illegal products, i.e. counterfeit or infringing products.
Preliminary seizures by administrative law enforcement agencies are available by their officers, i.e. customs officers in borders control cases and Department of Economic Development ("DED") officers in economic department administrative cases. Permanent injunction and destruction orders are granted depending on the outcomes and discretion of agencies. For instance, Customs can decide to re-export infringing or counterfeiting products although it is unlikely that they would exercise this power.
10.4 Can a party be compelled to provide disclosure of relevant documents or materials to its adversary and if so how?
In practice, this is unlikely to be available and plaintiffs need to present all their evidence to prove their claims. The judges in court proceedings have the discretion to oblige a party to present certain evidences or originals. Failure to comply may undermine the breaching party's position in proceedings or seldom be subject to escalating fines. A party held in contempt does not have a ground in Trade Mark Law nor do courts follow this route when a party fails to present a document or evidence.
Experts in the discovery process can request for documents and information. Failure to present such documents does not have any legal implication except the outcomes of the expert(s)' opinion and final conclusion in such a report.
10.5 Are submissions or evidence presented in writing or orally and is there any potential for cross-examination of witnesses?
All evidence and submissions must be provided to the court in writing. In criminal proceedings, a witness must personally appear and provide his/her statement before the judge, and be available for cross-examination. In civil proceedings, witness statements are rarely presented or used and if they are, such statements are submitted in writing and made available to the court ahead of time. Such witnesses may also be cross-examined by the other party.
At discovery stage, before appointed experts, which is a common procedure during the civil litigation process, the witness, without giving oath, can present and give their statements and information to the benefits of the parties.
10.6 Can infringement proceedings be stayed pending resolution of validity in another court or the Intellectual Property Office?
It is possible to stay proceedings pending the resolution when there is a criminal proceeding against an infringer. The civil court will not rule on the case if a criminal proceeding is ongoing on the same incident.
10.7 After what period is a claim for trade mark infringement time-barred?
The UAE Trade Mark Law does not provide for a statute of limitations in relation to trade mark infringement. The general rules for status of limitation apply in civil claims, i.e. 15 years from the last date of wrongdoing.
Criminal liability of misdemeanour is five years from the last date of infringement. If infringement is continuous, the status of limitation will start from the last date of committing the infringement crime.
10.8 Are there criminal liabilities for trade mark infringement?
Yes. There is a criminal liability based on different provisions and laws in UAE.
10.9 If so, who can pursue a criminal prosecution?
A criminal complaint can be filed by the owner(s) of registered trade marks, or its authorised representatives to initiate enforcement actions, such as licensees or franchises. Thereafter, the public prosecutor will progress the case further before the court.
10.10 What, if any, are the provisions for unauthorised threats of trade mark infringement?
Please see the answers to the questions above.
11. Defences to Infringement
11.1 What grounds of defence can be raised by way of non-infringement to a claim of trade mark infringement?
There are several grounds of defence that can be raised based on portions of the UAE Trade Mark Law, as well as based on the facts of the particular case. The most common defence to strike infringement claims are: i) non-infringement due to lack of similarity between marks, hence, no actual and/or likelihood of confusion among consumers; and ii) prior use of rights and pre-existence of rights by defendant based on trade name registration (when available). Some examples may include lack of confusion between both marks, prior use of the defendant's mark, and broad appeal of the mark.
11.2 What grounds of defence can be raised in addition to non-infringement?
All defences are possible and available for the infringer, such as filing for counter-claim to cancel a trade mark for any ground, cancellation for non-use, or illegitimate trade mark registration process for violating absolute and/or relative grounds.
12.1 What remedies are available for trade mark infringement?
In civil actions, all remedies available under UAE civil transactions law should be available for trade mark owners in infringement cases. Damages, injunction, emphasis on ownership of trade mark rights and ordering defendants to cease any claim of ownership on conflicting rights, declaration of judgment and publication of the same are available remedies. Damages could be based on direct losses and/or losses in profit.
In many cases, we have noted that local courts favour trade mark owners and have started to recognise legal and attorney fees as direct damages that trade mark owners suffer from.
12.2 Are costs recoverable from the losing party and, if so, how are they determined and what proportion of the costs can usually be recovered?
Generally, court costs, fees, and expert fees are all fully recoverable from the losing party. This includes fees paid to the court to file the case and fees paid to any court-appointed expert. In rare cases, courts have decided that court fees will not be recoverable from the losing party and that each party will have to bear its own costs. These decisions are made at the court's discretion.
Minimal attorney fees are also recoverable from the losing party and are determined at the court's discretion: the winning party can be awarded a sum ranging from USD 100 to USD 600. However, in trade mark cases, we have noted many precedents where judges include some of the actual attorney fees and logistic expenses, such as storage fees of counterfeit products seized during the proceedings, as part of direct damages and rule the same.
13.1 What is the right of appeal from a first instance judgment and is it only on a point of law?
Once a decision is made by the Court of First Instance, the same is appealable before the Appeal Court. The Appeal Court reviews both factual and law points under dispute.
13.2 In what circumstances can new evidence be added at the appeal stage?
Appellants can present new evidence especially that which was not available at the first instance stage, such as new infringement evidence, documents to show bad faith of the defendant, evidence to show the losses and financial claims for damages, etc. Appellees can also bring new evidence to the Appeal Court to strike the claim and support their defensive position.
14. Border Control Measures
14.1 Is there a mechanism for seizing or preventing the importation of infringing goods or services and, if so, how quickly are such measures resolved?
Yes, customs authorities should have the power to screen and enforce IP rights. In most Emirates, namely Abu Dhabi, Dubai, Sharjah, Ras El Khaimah and Ajman, the customs authority and specialised IP department can receive complaints, enforce IP rights and control borders. However, this requires recordal of marks, passing notifications, filing complaints and pushing with law enforcement agencies for seizure and preventing of importation.
In practice, it is difficult for all border authorities to take ex officio seizures and prevent all infringing goods from entering the local markets. However, trade mark owners have the mechanism and can keep pushing and seeking from border authorities to enforce their rights when they pass intelligence information about suspected imported goods.
15. Other Related Rights
15.1 To what extent are unregistered trade mark rights enforceable in your jurisdiction?
Only well-known trade marks are exempted from showing registration at the time of enforcement. However, there is no mechanism or clear reference for well-known trade marks registry and therefore, in practice, only registered trade marks in the UAE can be enforced before the courts and/or administrative authorities.
15.2 To what extent does a company name offer protection from use by a third party?
Company names, commonly known as "trade names" in the UAE are registered with the local trade names registries and companies registrar of each Emirate, i.e. Department of Economic Development.
If the registration is periodically renewed, the trade name will be protected from any third party utilising a similar name. If the registration leads to a company being incorporated with the particular name, protection will be afforded as long as the company remains in existence. Trade name infringement cases are also available and the owner of a pre-existing trade name can sue for violation of this right and seek cancellation.
A trade name is not a trade mark and therefore cannot be used or give its owner the right to use it as a distinctive element for its goods, such as selling products using the trade name only. This will not constitute a protection ground to object third party use.
15.3 Are there any other rights that confer IP protection, for instance book title and film title rights?
The title of copyrighted material is protected and gives protection to its owner in accordance with provisions of UAE Copyrights Law.
Trade mark rights are narrowly construed in the UAE as per the definitions previously provided in the UAE Trade Mark Law and does not include, for example, work of authorship titles or film titles. Owners of those titles are urged to register such name as a trade mark in the UAE to enjoy protection.
16. Domain Names
16.1 Who can own a domain name?
A private individual or a legal entity may own a domain name in the UAE.
16.2 How is a domain name registered?
A domain name in the UAE is registered with the .ae Domain Administration (".aeDA").
16.3 What protection does a domain name afford per se?
A domain name registration gives the right to its owner to utilise and claim ownership on the domain name from the time of registration. It can also be used as evidence of first date of use for the trade mark or creation of other IP rights, such as copyrighted materials posted.
The domain name is protected if it is also registered as a trade mark in the UAE. Protection may be enforced before the .aeDA dispute resolution mechanism, which is identical to the Internet Corporation for Assigned Names and Numbers' ("ICANN") Uniform Dispute Resolution Policy ("UDRP").
In anti-cybersquatting cases, UDRP process can be filed before WIPO to retrieve ownership of domain name to the legitimate trade mark owners.
16.4 What types of country code top level domain names (ccTLDs) are available in your jurisdiction?
Traditionally, there has been only one country top level domain name (.ae) but in the last few years, they added the country code in local language, i.e. Arabic. Therefore, there are two top level domain names assigned to the UAE as follows:
16.5 Are there any dispute resolution procedures for ccTLDs in your jurisdiction and if so, who is responsible for these procedures?
Most disputes relating to ownership are referred to WIPO to rule in accordance with ICANN and UDRP procedures.
When there is an infringing use of such ccTLDs, the local authorities will have jurisdiction and can investigate the misconduct or violation. Therefore, local enforcement authorities such as the Police, court and/or Administrative Authorities have the full power to rule and investigate any violation of trade mark rights occuring on such platforms.
The most involved local authorities that can rule, investigate and monitor domain names under ccTLDs in the UAE are:
- Cyber-crimes Division at the Police (local authority in each Emirate);
- Economic Department (local authority in each Emirate); and
- Telecommunications Regulatory Authority ("TRA") (Federal authority in the UAE).
17. Current Developments
17.1 What have been the significant developments in relation to trade marks in the last year?
Several Departments of Economic Development in the Emirates of the UAE have created electronic platforms allowing trade mark owners to file infringement and counterfeit complaints electronically, to speed up the seizing of counterfeit goods.
17.2 Please list three important judgments in the trade marks and brands sphere that have been issued within the last 18 months.
There are several judgments. We mention the following:
- A judgment by the Dubai Court of Cassation to confirm fair use and protection of a trade mark does not extend to include a database. The court did not rule in favour of a local giant telecom service provider and asserted a foreigner entity's right to utilise available information in the public domain to build its owner copyright on data. The trade mark element was not found as a reason to extend the infringement claim.
- A Trade Mark Committee decision to overrule the opposition decision. The Committee decision allows for an appellant to amend its trade mark and remove an element that was considered as a violation of pre-existing trade mark rights. This decision sets a good precedent for trade mark applicants to reconsider their marks after opposition and move to amend an element in the applied mark.
- A judgment by the Dubai Court of Cassation ruling overturning a Court of Appeal ruling on the dismissal of a cancellation action due to the confusion of two brands. The judgment assists to put extra elements to rule on cancellation.
17.3 Are there any significant developments expected in the next year?
- We expect the UAE Ministry of Economy to continue with implementing electronic systems for all prosecution services, expedite examination and build on a very efficient system.
- More enforcement options and expedited steps for trade mark owners will be available especially with EXPO2020 that will be held in Dubai from October 2020.
- Implementing the new Intellectual Property Law by DIFC will also be a good start and boost for IP practice.
17.4 Are there any general practice or enforcement trends that have become apparent in your jurisdiction over the last year or so?
Online infringement and counterfeit trade has become a real concern. Dialogues with marketplace platforms, law enforcement agencies, social media companies and trade mark owners is a must. Small shipments are becoming a very serious issue as it saves time and cost incurred in logistics.
Originally published by International Comparative Legal Guide: Trade Mark Laws and Regulations 2020 .
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