ABU DHABI – On September 2021, the Ministry of Economy in the UAE published a new Trademark Law, Federal Decree Law No. 36 of 2021 (the Law), in the Official Gazette. The Law was entered into force on 1 March 2022.
The implementing regulations have yet to be issued, but the summary below identifies the key features:
Trademark Scope
The Law expanded the scope of protection of trademarks to include 3D marks, sound marks, smell marks, colour marks, and hologram marks. In addition, it expanded the definition of trademarks to cover Geographical Indications (GI).
While GI was addressed in the previous law, the new Law regulated GI, included a definition of the term, and addressed the conflict between GI and trademarks.
The Law set up clear criteria to measure whether a trademark can fall under the well-known trademarks category. It has also introduced the possibility of filing series trademark applications.
It also opened the window for individual applicants to file trademark applications, while previously, only companies were allowed to register trademarks.
Finally, it is no longer mandatory to record trademark licenses at the Trademark Office (TMO) registry. There will be no effect for not recording the same.
Classification
The UAE now follows a multi-class filing system making it possible to file a single trademark application including multiple classes. Previously, each class had to go into a separate application.
Publication
The Law has omitted the requirement of publication in two local newspapers. Only publication in the Official Gazette remains required. This affects new trademark applications, renewals, recordals, and amendment applications.
Examination
The TMO will examine trademark applications within ninety (90) days from the date of the application rather than thirty (30) days as per the previous practice.
Trademark Grievances Committee
The Law changed the internal structure of the Trademark Grievances Committee (the Committee). It is now headed by a specialised judge nominated by the Minister of Justice and two specialised members appointed by the Ministry.
Normally, applicants/agents would have to file any objections to decisions issued by the TMO regarding applications, oppositions, and cancellations before the Committee. Now, after appealing the TMO’s decision, the Committee issues its decision, which can be appealed before the Federal Court of Appeals, opposite to the previous practice where appealing the TMO’s decision was possible before the Court of First Instance.
Trademark Enforcement
Unless a trademark was registered in bad faith, it would become irrevocable after five (5) years from the date of its registration, provided that it was not challenged during this period.
The Law provides a five-year term for a prior user of a trademark to request the cancellation of a registered trademark. It also delegates the Ministry to handle trademark cancellation actions regardless of the reason for the cancellation.
Finally, a significant increase in the penalty fines was set for trademark infringement.
For more information, please contact uae@qumsieh.com.