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An Overview
The UAE has announced the most significant legislative change in years, including the enactment of Federal Trademarks Law No. 36 of 2021 (“New UAE Trademark Law”), which came into effect on January 2, 2022. The New Law will completely replace Federal Law No. 37 of 1992, modified (the “Old Law”). It is the most noticeable change to Trademark Law in UAE since the Old Law was enacted. While the latest issued Trademark Law in UAE is mainly based on the GCC Unified Trademarks Law, it includes several new features and processes. The New Trademark Law in UAE addresses numerous concerns that were absent under the previous Law, such as non-traditional trademark registration, increased penalties for trademark infringement, and confirmed some other aspects addressed through Court precedents, such as prior use and registration in bad faith. Furthermore, for the first time, the New Trademark Law in UAE allowed for the registration of Geographical Indications and the reasons for their registration and enforcement. The significant changes outlined in the New Trademark Law in UAE are summarized below.
1. Expanded definition of Trademark
The New UAE Trademark Law Old has an extended definition of a trademark, which now encompasses non-conventional sorts of marks due to the legislation modifications. As a result, applicants may directly petition for the protection of holographic or 3-Dimensional markings and sound, voice, and smell marks. Furthermore, the new Law makes it possible to file and register Geographical Indications in the jurisdiction.
2. Changes relating to well-known Trademark
The New UAE Trademark Law clarifies the standards for determining whether a trademark is well-known. The criteria include:
(i) the degree to which it has been known to the general public as a consequence of its promotion;
(ii) the number of people who have heard about it as a result of its promotion; and
(iii) The registration time, the use of it, etc.
(iv) the number of other countries where the Trademark is registered or well-known,
(v) the worth of it, or
(vi) The degree to which it affects the marketing of products or services that employ a well-known Trademark to differentiate them.
3. Multiple Class System
Another significant change under New UAE Trademark Law is introducing the multiple class system. It will enable applicants to seek trademark protection in the UAE for many classes in a single application, replacing the system, which only allowed for single class registrations. In addition, eligible mark applicants may now get interim trademark protection for use during show participation.
4. Extension of Time limit for examination of trademark Application
The time limit for examining a trademark application has also been changed under New UAE Trademark Law, from 30 days to 90 days. Furthermore, when a 5-year term has expired, bad faith marks may now be cancelled. Any cancellation proceedings must now be filed with the UAE Trade Mark Committee rather than the UAE Courts.
5. Establishment of Grievance Committee
The introduction of a Grievances Committee (“Committee”) in the Ministry, led by a specialized judge nominated by the Minister of Justice and two specialized members selected by the Minister of Economy, is an intriguing development brought about by the New Law. The Committee will hear the Trademarks Office’s decisions on applications, oppositions, and cancellations. Given the issues it will hear and determine, having a judge chair the Committee is necessary.
6. Appeal to the Committee Decisions
Under the Old Trademark Law, all judgments made by the Committee may be appealed to the Federal Court of Appeal rather than the Court of First Instance. Given that the Committee will consist of a judge and two experts, this move makes perfect sense. It will drastically reduce litigation time since there will only be two steps of appeal and high court, instead of three as there are today under Old Law.
7. Incorporation of Prior Use Doctrine
The right of prior use has long been recognized in the UAE via court decisions, and it is now codified in the New UAE Trademark Law. The New Law specifically grants a former user of a trademark the ability to revoke a trademark that was registered during the previous five years unless the prior user of the brand approved the registration, directly or implicitly.
8. Revocation of Trademark
In contrast to the Old Law, which gives the competent court jurisdiction over trademark cancellations, the New Law gives this authority to the Ministry of Economy. Regardless of the basis for the cancellation mentioned in the new Law, the Ministry has the authority to investigate all cancellation petitions.
9. More clarity on Trademark Assignment and Licensing
The New UAE Trademark Law made it explicit that a trademark might be assigned with or without consideration, while the Old Law did not. According to the New Trademark Law in UAE, trademark licenses are not needed to be registered with the Ministry. The consequence of not registering a licensing agreement against third parties was a point of contention under Old Law, but this has now been addressed, and there will be no effect for failing to register the license.
For more information on the changes introduced under the New UAE Trademark Law, please don’t hesitate to contact Lawyers and Legal Consultants. Additionally, The primary goal of the lsat tutor is to provide assistance to people who are preparing for the LSAT. The tool can also be used by law school admissions officers as a resource for their students.
