How to avoid legal actions on trademarks in the UAE?

The Trademarks law in the UAE provides a very comprehensive definition for 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).

Trademarks Law in the UAE:

The United Arab Emirates has issued the new trademarks law, namely the ‘Federal Decree-Law No. 36/2021 on Trademark’ (‘trademarks law’). The new trademarks law issued on 20 September 2021 repeals the earlier issued Federal law number 37 of 1992 on trademarks and its amendments. Under the trademarks law, a ‘ trademarks register’ is maintained with the federal ministry of economy, which records all the trademarks, names, addresses and type of activities of their owners, the descriptions of their goods or services and any transfer, assignment, transfer of ownership, mortgage or license for use concerning 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 considering trademark protection or protection against possible infringement of trademark, registering the trademark is the first step. Having a valid trademark registration certificate is the only sure way to protect your trademark, as it serves as a valid proof to avoid any potential trademark infringement claim. Trademark registration is granted after an extensive process, which includes procedures covering possible objections, advertisements and final publication. Only after having completed the extensive processes that a trademark registration certificate is issued, which serves as the valid ownership proof for the legal use and monetization of the said trademark. There are forty-five classification categories under which one can register their trademark in the United Arab Emirates, which follows the Nice Classification (NCL) for international registration of trademarks. The Nice Classification has been established by virtue of the Nice Agreement of 1957. It constitutes an international classification of goods and services applied for registration of marks and is updated regularly. Classes 1- 34 constitute the ‘goods’ classes, and the classes 35-45 constitute the ‘services’ classes.

Increased Penalties:

The new trademarks law has introduced hefty penalties in case of infringement, and in fact, the financial penalties being imposed have been increased in the new law as compared to the previous version. Articles 49 to 52 of the new trademarks law lays out the penalties that can be imposed and include amongst others, a hefty penalty of even up to One Million Dirhams can be imposed on a person infringing a registered trademark by any of the following acts:

• 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.

Trademark registration provides many advantages to the owner of a mark for a variety of reasons. In the first instance, it provides legal protection that ensures that the owner of a trademark can pursue infringement actions with the court and customs authorities in order to protect the trademarked products and/or services. Additionally, it helps to create recognition of the quality of the product with its customers. Customers often automatically retribute the quality of a product with its brand value. Trademarks essentially constitute a reliable mechanism through which the proprietors can attract and maintain their customer base. Once you have a valid trademark registration obtained in the UAE, you can then rely on the many safeguards provided by the trademarks law that ensures that the trademark is protected against infringement and in case of suspected infringement, proper legal measures can be undertaken.

Dr. Hassan Elhais is a legal consultant in Dubai, specializing in the drafting of all statements of claim, memos and consultation on litigation of all manner.