There have been some new, fundamental changes to the trademark law in the UAE with the issuance of Federal Law no. 36 of 2021 concerning trademarks which will come into effect on January 2nd, 2022. With these important changes, right holders in the UAE, as well as businesses who are or plan to connect and expand to this market, should take extra notes as it can greatly affect their rights.
There are numerous changes in relation to trademarks in the UAE. This article will cover several of the most important modifications.
First of all, the definition of trademarks has been expanded in the New Law to cover more non-traditional trademarks such as 3D trademarks, single color, holograms, sound, and smell.
Regarding the grace period for renewal. Previously, the trademark owners who have successfully registered their trademark will only have 3 months after their trademark’s expiration to file a renewal, along with the payment of a stipulated fine.
Nowadays, this period has been extended to 6 months, the timeframe that is typically applied in many other countries, including the UAE’s neighbor – Oman.
This change provides more time for rights holders who have forgotten or are unable to handle the renewal requirement in time.
One other change is about the requirement of a legalized Power of Attorney with new filings.
On filings, the current UAE IP Office accepts simply signed POA. This might alter with the new amendment to the law. Nonetheless, it should be noted that nothing is certain at the moment until a confirmation notice regarding the issue is administered by the IP Office amending the current practice.
Modification to the trademark law on publication, post-registration amendment, and cancellation
As the UAE is slowly becoming one of the IP hubs in the world, changes are made towards the trends of the world.
Regarding publication, the requirement for the publication of the mark in a local newspaper(s) is no longer needed. Instead, trademark owners must make official publications through the Trademark Journal.
One important key change is that after the registration of a mark, the owner can still make amendments to the trademark’s information. The changes can only be made in the specifications and won’t likely expand or reduce the scope of protection. However, it is still a great improvement.
Now, the trademark owners and/or their representatives can add elements in the specifications, potentially including a limitation or an exclusion phrase.
Finally, the cancellation condition of a trademark.
Previously, the jurisdiction for cancellations of trademarks is with the competent court. Now, the New Law moved this jurisdiction to the Ministry of Economy. The Ministry shall have the jurisdiction to look into all cancellation requests regardless of the reasons.
The new regulation has added a 90 days timeframe for the IP Office to issue a decision from the receive date of the complaint request.
However, the regulations did not note details or data on the formation of the Grievance Committee.
There are still many other changes to the trademark law in the UAE. For the detailed version of the changes, please visit the official IP Office website of the UAE.
You can see a list of UAE IP Firms here.