introduction

The Government of the UAE issued a trademark law that came into force on 15th January 15 1993, while implementing regulations were enforced on February 2, 1993. Under the new federal law and the enforcement measures coordinated among various government departments, its now possible for trademark owners to protect their marks. Trademark owners may seek government assistance to ensure that goods bearing infringing marks are seized and in certain cases destroyed, and that the owners of the infringing marks are fined.
Moreover, since 1st January 1995, the UAE has become a member of the GATT. It is expected that the UAE will become a member of the World Trade Organization in the near future.

Registering your trademark in the UAE
Any party that may need to register their trademark(s) in the UAE has to forward an application to the Ministry of Economy & Commerce. Trademark applications must be filed in Arabic, together with fourteen (14) specimen drawings of each mark. The application may filed through a locally licensed law firm in the UAE. Other documents mentioned hereafter must be filled as well.
The Ministry will carry out the necessary checking to the above application and will issue an examination report which shall indicate whether further information must be provided or whether there are any requirements, conditions or limitations in connection with the prospective registration. The Ministry normally calls upon the applicant to reply to such reports within a specific time period. Any requirements listed in the Ministry's report must either be accepted by the applicant or appealed against it to the Trademarks Committee of the Ministry. The Committee's decision is further appealable to the civil court.
Upon resolution of all outstanding issues, trademark applications preliminary approved for registration are published in the UAE Official Gazette. The trademark registration must also be published in two leading Arabic newspapers.
After publication, the general public is provided thirty (30) days to forward a written objections to the Ministry concerning the registration of a trademark. The applicant for the trademark registration shall have thirty (30) days to respond to any such objections. The Ministry then decides whether to accept or reject the application. This decision may be appealed to the Trademarks Committee of the Ministry, and then to the competent courts.
If the mark is accepted by the Ministry for registration, the applicant notifies and provides details related the mark to the federal and local bodies, Chambers of Commerce & Industry, etc.

Classification of trademarks valid for registration
The below mentioned can be the subject of a trademark registration:

• Surnames

• Geographic names, (e) Numbers

• Language terms that are not related to the goods or services they are associated with

• Slogans

• Language terms that by virtue of their use over the time attained distinctiveness and distinguishably in relation to the goods or services they are associated with

• Logos, Designs, Musical or sound trademarks, newly coined words and combinations of any of the above items.
  

Restrictions
Following may not be subject for a trademark registration:

• A mark that is similar or identical to a previously registered trademark or, if proven, used with respect to the same class of products or services.

• Foreign trademark having international repute that extends beyond the borders of the country of origin, unless requested by the original owner.

• A mark that is void of any distinguishing attribute or feature, a mark that is composed of statements that are no more than appellations accorded by usage to such goods, products or services, a common drawing or normal image of the products.

• Any mark that is offensive to public morals or can cause disturbance to the public order.

• A public emblem, flag or symbol, or any imitation thereof, of the State, of an Arab or international organization or any establishment thereof, or of any foreign state, unless lawfully authorized

• Red crescent or red cross symbols or other symbols similar thereto, or a mark in imitation thereof.

• A mark that resembles or is similar to a symbol that has purely religious associations

• A geographic name, that may causea confusion in respect to the origin or source of the products or services.

• The name, surname, image or emblem of a third party, unless such third party/his heirs preliminary agree to use it as a trademark.

• A mark that deceives the public or that contains false statements in regard to the origin, source or other characteristics of the products or services, and similarly a mark that contains a fictitious, imitative or forged commercial name.

• A mark owned by a national or juristic person with whom transactions are prohibited by the UAE law

• A mark the registration of which in regard to certain classification of goods or services that may cause decrease in other products or services value

• A mark that includes the following words or expressions: privilege, privileged, registered, registered drawing, copyright, imitation is forgery or any other similar words and expressions

• A statement relating to an honorary degree, the attainment of which the applicant for registration cannot prove by lawful means.
  

Trademarks classification in the UAE

The World Intellectual Property Organization (WIPO), for classifications of Good and Services are used in the UAE.
An application must be filed for each class separately with respect to each class when marks are to be registered in various classes. If the products or services belongs to a single class, its then possible to register a group of marks in a single application, if the essential elements of the marks are similar and the differences among them are restricted to matters that do not materially affect their identity or similarity, such as the color of the marks or statements of the products or services related thereto. The group of marks must also be registered within the same international class of goods or services.

Protection Validity

The protection validity in the UAE is Ten (10) years and renewable for another similar period of time.

Protection Renewal

If the Ministry does not received a renewal of a trademark, the Ministry shall notify the owner of the mark in writing, at the address listed on the registration, of the expiration of the period of protection of the mark. Such a notification shall be sent during the month following the expiration date of the protection period. If the owner of the mark does not submit an application for renewal within three months following the date of expiration of the protection period, the Ministry will delete the registration from its records. Only after three (3) years of its deletion date, a re-registration of a trademark is applicable.
For renewal, the application must be submitted to the Ministry during the final year of a registration validation period. Renewals are provided without additional examination by the Ministry, and without permitting third parties to object to such renewal, and without revisions or additions to the previously registered trademark.

Rights and Remedies for Protection of Registered Trademarks

Since the implementation of the law, the UAE courts have been active in reviewing trademark infringement cases. Personnel training have been exercised on various ministerial levels to follow suit, to carry out immediate actions in raiding warehouses, seizing good and levying fines on offending parties.
Also, various police departments were equipped with laboratories to examine counterfeit goods to prepare detailed reports on any confiscated products.
The trademark owner may file a suit in civil court to demand compensation for any damages suffered. Prior to or during such an action, the owner may obtain a preliminary attachment order against the counterfeit goods. Trademark owners may also apply to the court to issue a precautionary attachment order against all inventory, equipment and tools used to manufacture counterfeit goods. Store signboards, packaging, labels and other items which bear the infringing mark may also be seized.
Main actions must follow precautionary attachments within ten (10) days of issuance of the precautionary order. The opposing party has the right to file a counterclaim against the trademark owners for damages, if the main action is not filed within the stipulated period.

In some cases, successful plaintiffs receive court orders for the destruction of the goods attached and compensation for damages. Furthermore, courts are empowered to order the offending parties to terminate their production of the counterfeit goods and will publish their decisions in local newspapers as a mean of alerting the public to the offenses. Any further offenses may result into suspension of offenders trade licenses.

Cancellation of Trademark Registration

In case one of the following takes place, the trademark registrations can be canceled:

1. By a final court judgment finding that the mark was unlawfully registered

2. By a court order to delete a registration due to lack of use of the mark for a time period of five consecutive years

3. As per right owner request

4. Non-payment of renewal fees

Cancellation of trademark registration must be announced in the UAE Official Gazette.

Trademark Licensed to a Third Party

After completion of all requirements to license the use of such a trademark by a third party with written and legally authenticated agreements, it must be registered with the Trademarks Section of the Ministry.
The cancellation of such an agreement can take place upon the request of either party, provided that the request contains documented proof of the expiration or termination of the licensing agreement. Non-canceling parties have the right to object such a cancellation. The Trade Control Department of the Ministry decides on such objections. These decisions may be appealed to the Ministry Committee and then to a competent court.

Trademark Transfer of Ownership or Mortgage

The law has a provision to transfer trademark ownership and mortgaging as well. An agreement to transfer the ownership of a commercial establishment is deemed to include the transfer of the trademarks registered in the name of the transferor, If the trademark are considered to have an established relationship with the enterprise, unless the parties specifically agree to the contrary. If the ownership of the commercial establishment is transferred without the transfer of the trademark, the transferor may continue to use the trademark in connection with the relevant products or services concerning under which the trademark was originally registered, unless the parties specifically agree to the contrary.
A transfer of ownership of a mark or a mortgage of a mark may not be asserted against third parties until such transfer or mortgage has been registered in the Trademarks Register and publication thereof is accomplished in accordance with the UAE trademark regulations.
The validity for licensing the use of a trademark may not exceed the validity of the protection of the trademark. Licensee may not transfer the license to third parties or grant sub-licenses unless the licensing agreement with the original trademark owner empower him do so.

1. A set of twenty (20) copies, identical to the form of the trademark attached to the application. These drawings may be in color/black & white and the size of each print should not exceed 6 x 7 cm.

2. A copy of the registration certificate or application from the country of origin should be provided if priority is claimed.

3. Power of Attorney, notarized and legalized up to the UAE consulate.

4. Name, Address, Nationality and Nature of business of the applicant

5. Description of the goods or services to which the trademark applies, together with the classification number of the International Class of Products and Services to which the trademark related to.

6. If the mark includes one or more words written in a foreign language, a certified translation in Arabic must also be submitted. Such translation may be arranged in the UAE.