UAE has always been one of the rising stars in the world. Recently, as part of its 50th Anniversary, this country has expressed that clearly by focusing more and more on its foreign diplomatic policies. Besides the policies, the UAE also made some new changes to the trademark regulations in the UAE to catch up with the world, specifically involving the international registrations under the Madrid System.
Expansion of protection scope
The definition of a trademark in Article 2 of the Trademark Law has been expanded to cover more types of non-traditional trademarks that can be protected such as 3D trademarks, single color, holograms, sound, and smell.
This change is more of a formality change as although the registration of a 3D trademark hasn’t been stipulated in the Former Law (Federal Law No. 37 of 1992), there have been many registered 3D trademarks in practice in this country.
Regarding well-known trademarks, Article 4 of the New Law stipulates new criteria for considering a trademark as well-known as follows: “The extent to which it is known to the public as a result of its promotion, or period of its registration, or its use, or the number of countries in which it is registered or becomes well-known, or its value, or the extent of its impact on the promotion of goods or services that use the well-known trademark to distinguish them.”
Refused goods and services
At the moment, IRs designating the UAE for refused goods such as alcoholic beverages will be immediately rejected when examined in the UAE.
With the new law, the refused goods and services will remain the same. This means that trademark applications for goods in class 33 are still not accepted in the UAE. The International Registrations apply the same rules.
In addition, the new Law also expanded on the forbidden marks in the UAE including any trademark that is identical, similar, imitation, translation, phonetic translation, or transliteration of a previously registered trademark or well-known trademark or of a fundamental part thereof.
This addition is similar to the list of the GCC Unified Trademarks Law.
Oppositions
From now on, the local Trade Mark Office will republish International Registrations for opposition purposes in the local Trade Mark Journal.
Provisional refusals and local representation
This provision divides the problems into 2 cases.
If the problem is minor and only needs some minor supplementations or amendments, no local representative will be required.
However, if the matter is more complicated, e.g. involving opposition actions, the IP rights holders will need a local representation with a Power of Attorney under the usual conditions (notarization, legalization if the applicant is outside the UAE).
Trademark filings in the UAE
As the new trademark law of the UAE was issued on September 20, 2021, published on September 26, 2021, and came into effect on January 2, 2022, it’s now possible to file multi-class filings in the UAE.
However, applicants should aware that the online filing system hasn’t been kept up to date.
According to the trademark office of the UAE, multi-class filings will be treated the same way as single class, and should one class be refused then the accepted class could be divided and proceed to registration.
Currently, the other GCC countries are only publishing the accepted trademark application, trademark renewal, and trademark cancellation in the official Gazette of the Trademark office, and there is no need to publish the same in local daily newspapers. Accordingly, learning from this, the UAE has also stopped the publication in the local newspaper, resulting in a slight decrease in the filing costs, greatly supporting the IP rights holders’ finances.
You can see a list of UAE IP Firms here.