Significant Changes in Trademark Practice in the UAE Following Accession to the Madrid Protocol and the Publication of a New Trademark Law

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In short:

  1. In late 2021 and early 2022, the UAE introduced a new trademark law and joined the Madrid Protocol.
  2. These are just some of the widespread changes to the UAE’s intellectual property framework over the past few months. These include new laws on data protection, copyright and patents/designs.
  3. Brand owners will now be able to benefit from increasingly cost-effective and simpler ways to protect, market and enforce their trademark rights in the UAE.

Overview

On Saturday November 27, 2021, the biggest legislative reform in the history of the United Arab Emirates was announced.

Over forty laws, covering a range of areas, were included in these amendments and included either amendments to existing laws or the introduction of new laws. Announced in the Year of 50and‘ Following the formation of the UAE in 1971, the reforms aim to enhance economic, investment and business opportunities in the UAE and also to strengthen the rights of individuals and entities in the UAE.

From an intellectual property perspective, the reforms included:

  • A new trademark law (Federal Trademark Law No. 36 of 2021)
  • A new copyright law (Federal Law No. 38 of 2021 on Copyright and Neighboring Rights)

These follow other important legislative developments during 2021, including:

  • A new federal law on data protection (Federal Law No. 45 of 2021 on the protection of personal data) entered into force on January 2, 2022
  • A new Law on Patents, Utility Models and Designs (Federal Law No. 11 of 2021 on Regulation and Protection of Industrial Property Rights) which entered into force on November 30, 2021.

This briefing note will focus on the new trademark law.

New trademark law

Federal Trademark Law No. 36 of 2021 (the New trademark law) entered into force on January 2, 2022 and replaces the former Trademark Law (Federal Law No. 37 of 1992).

Although the Executive Regulations, which will provide further details on the implementation of the New Trademark Law, have not yet been published, the New Trademark Law introduces a number of key changes which further improve the trademark practice in the UAE.

Some of the key changes of most interest to brand owners include:

Multi-class applications

  • Until now, the UAE (like other GCC countries) was a one-class jurisdiction.
  • This meant that each class to be trademarked required a separate application for each class.
  • Moving to a multi-class system should make registration and renewal costs cheaper for trademark owners. In particular, for brands that offer a range of related products falling under different classes, this should allow covering the “related classes” within the available budget. For example, class 25 (for clothing, footwear, headgear) and class 18 (luggage and bags).
  • The mechanism by which multi-class filings can take place will be defined in the Executive Rules.

Unconventional brands

  • A mark functions as a “source identifier” or “badge of origin” and enables consumers to identify a merchant’s goods or services from those of other merchants in the marketplace.
  • The definition of a ‘trademark’ under the new Trademark Act has been significantly broadened to include a wider range of ‘unconventional marks’.
  • These “unconventional marks,” which include 3D marks, holograms, sound marks, and scent marks, reflect the changing nature of what the market considers a mark.

Clarification of a ‘well-known’ or ‘famous’ trademark

  • While the old Trademark Act referred to a mark as “well known” or “well known”, the new Trademark Act provides very useful clarifications on the criteria to be met to qualify as “well known” or “well known”. fame”. trademark “.
  • These criteria are:
  1. The extent to which the public knows the brand through its promotion;
  2. How long has the mark been used?
  3. The number of countries in which the mark has been registered or has become famous;
  4. How long have the listings been in place; and
  5. The value or effect the mark has on promoting the good or services offered under that mark

Appointment of a grievance committee

  • A “Trademark Complaints Committee” is to be set up, headed by a specialist judge (to be appointed by the Minister of Justice) and assisted by two experts (to be appointed by the Ministry of Economy).
  • This grievance committee will hear all objections relating to trademark applications, opposition proceedings and cancellation actions.
  • It is important to note that an appeal against a decision of the grievance committee will be taken to the court of appeal rather than to the court of first instance.
  • The specialized nature of the grievance committee should facilitate faster (and cheaper) processing of objections,
  • If a party decides to appeal a decision of the grievance committee, additional costs are saved by avoiding having to appeal first to the court of first instance and then to the court of appeal (as was the case before).

Annulment actions before the Ministry

  • In a very important change, trademark cancellation actions can now be brought before the Ministry of Economy rather than in court.
  • This should significantly reduce the time and cost of any undo action.
  • Additionally, it will be of particular benefit to trademark owners who identify unauthorized trademark registrations for their trademarks that have been obtained by third parties.

Registration of trademark licenses

  • The new trademark law resolves the issue of whether or not a trademark license must be registered to be effective.
  • Although the new Trademark Law states that any license agreement must be in writing and notarized (and we suggest that it be legalized when a party is outside the UAE), it clearly states that the registration of License to Trademark Registry is not required.
  • This will be particularly useful to trademark owners seeking to enforce trademark rights for a trademark that is used under license by an authorized licensee.

These are just some of the changes introduced under the new Trademark Law and we will post a more detailed analysis once the Executive Regulations are published. In the meantime, it is clear that these changes are aimed at further streamlining the framework for trademarks in the UAE.

UAE’s accession to the Madrid Protocol

Another significant trademark development in 2021 saw the United Arab Emirates become the 109th member of the Madrid System when it acceded to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the Madrid Protocol). This entered into force in the United Arab Emirates on December 28, 2021.

The Madrid Protocol and the Madrid Agreement (both forming the Madrid System) allow trademark owners from one member country to protect their marks in any of the 108 other member countries by filing a single international application per through their national trademark office and via the World Trade Center. Intellectual Property Organization (WIPO) in Swiss.

In practice, this means that local trademark holders in the United Arab Emirates will be able to use the Madrid Protocol to protect their marks in other Madrid members by filing a single international application and paying a single set of fees. Similarly, member countries of the Madrid Protocol will be able to file international applications designating the UAE. The operating mechanism for Madrid Protocol repositories in the United Arab Emirates is expected to be announced soon.

However, not all countries are members of the Madrid system. For example, and at the regional level, the Gulf Cooperation Council (GCC) includes the United Arab Emirates, Bahrain, Kuwait, Oman, Qatar and Saudi Arabia. Of these six GCC countries, only the United Arab Emirates, Bahrain and Oman are members of Madrid. National filings are therefore required in Saudi Arabia, Kuwait and Qatar.

Additionally, there may be instances where it is more cost-effective, strategically important, or both, to file a national application directly in the UAE rather than through the Madrid Protocol.

Finally, even when a trademark registration program uses the Madrid Protocol, it will still be necessary to designate a local representative in a particular country in the event that an objection during examination, or an opposition during publication, arises. in this country.

Careful consideration of the various factors should be taken into account when structuring a trademark filing program and determining whether national filings, Madrid filings, or a combination of the two is the most appropriate mechanism for deploying protection. of a brand.

Conclusion

The second half of 2021 and the beginning of 2022 have seen very significant changes in trademark practice in the UAE. Through the soon-to-be-announced Executive Regulations, the changes implemented by the new Trademark Law will provide brand owners with a wider range of mechanisms for the protection, marketing and enforcement of their trademark rights.

At the same time, the UAE’s accession to the Madrid Protocol provides an additional means by which trademark owners, both within the UAE and abroad, have access to obtaining trademark registrations in outside their country of origin.

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