The UAE’s trademark law offers a fairly detailed definition of a trademark. “A Trademark is everything that takes a distinctive shape of names, words, signatures, letters, Symbols, numbers, addresses, seals, Drawings, Pictures, Engravings, packaging, graphic elements, forms, colour or colours or a combination thereof, a sign or a group of signs, including three-dimensional marks, Hologram Marks, or any other mark used or intended to be used to distinguish the goods or services of a facility from the goods or services of other facilities, or to indicate the performance of a service, or to conduct monitoring or examination of goods or services. A distinctive sound or smell may be considered as a Trademark” (Article 2).
The new trademarks law has been enacted in the United Arab Emirates, namely the ‘Federal Decree-Law No. 36/2021 on Trademark’ (‘trademarks law’). The new trademarks law, which went into effect on September 20, 2021, repeals Federal Law Number 37 of 1992 on trademarks and its revisions.
A trademarks register’ is maintained with the federal ministry of economy under trademarks law, which records all trademarks, their owners’ names, addresses, and types of activities, descriptions of their goods or services, and any transfer, assignment, transfer of ownership, mortgage, or license for use of such Trademarks, as well as any other changes therein. The trademarks law specifically states that ‘whoever registers a trademark shall be deemed its sole owner’. Further, once the trademark is registered, its own may not be disputed when its registration and use have been continuous for at least five (5) years from the date of registration without an action being lodged against it, unless it is proven that the person who registered such action has had a mala fide intent.
When it comes to trademark protection or protection against probable trademark infringement, the first step is to register the trademark. The only sure way to protect your trademark is to have a legitimate trademark registration certificate, which serves as proof against any prospective trademark infringement lawsuit.
The registration of a trademark is granted following a lengthy process that involves processes for dealing with any objections, ads, and final publication. Only after the lengthy procedures have been completed is a trademark registration certificate produced, which serves as sufficient proof of ownership for the lawful use and monetization of the brand.
The United Arab Emirates adopts the Nice Classification (NCL) for international trademark registration and has forty-five classification categories under which a trademark can be registered. The Nice Classification was established in 1957 as a result of the Nice Agreement. It is a continuously updated international classification of goods and services used for trademark registration. Classes 1- 34 constitute the ‘goods’ classes, and the classes 35-45 constitute the ‘services’ classes.
Increased Penalties
The new trademarks legislation imposes harsh penalties in the event of infringement, and in reality, the financial penalties imposed in the new law are higher than in the old version. Articles 49 to 52 of the new trademarks law spell out the penalties that can be imposed, including a severe penalty of up to one million dirhams for anybody who infringes on a registered trademark by doing any of the following:
- Forging of a trademark that has been registered in the UAE or counterfeiting a registered trademark in a manner attempting to confuse the public in terms of the goods or the services of the original trademark. Knowingly using a forged or counterfeit trademark for commercial purposes.
- Using in bad faith the trademark registered and owned by others on any goods or services.
- Possessing of any tools or materials with the intention to use them to forge or counterfeit a registered or well-known trademark.
- Importing or exporting of goods bearing a forged or counterfeit trademark with full knowledge that the goods are forged or counterfeit products.
For a variety of reasons, trademark registration provides significant benefits to the owner of a mark. In the first instance, it provides legal protection by ensuring that a trademark owner can pursue infringement actions in court and with customs officials to safeguard trademarked items and/or services.
Additionally, it aids in the creation of client recognition of the product’s quality. Customers frequently instantly associate a product’s quality with its brand value. Trademarks are simply a dependable technique through which business owners can acquire and retain customers. Once you have a valid trademark registration in the UAE, you can take advantage of the many safeguards established by the trademark law, which ensure that the trademark is protected from infringement and that suitable legal action can be taken if infringement is suspected.
(As cited in mondag.com)
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