Discussions are going on for the replacement of the articles (1), (3), (4), (8), (10), (11), (13), (14), (16), (17), (18), (19), (21), (22), (23), (25), (32), (37), (38), (41), (43) of the Federal Law No. (37) of 1992 to the following articles:
ARTICLE (1)
In the implementation of the provisions of this law, the following words and phrases shall have the meanings shown against each of them, unless the context otherwise indicates:
- The State: The United Arab Emirates
- The Minister: The Minister of Economy and Commerce
- The Ministry: The Ministry of Economy and Commerce
- The Concerned Authority : The concerned authority of the Emirate.
- The Journal: The Trade Mark Journal issued by the Ministry.
- The Drawing: Each design containing a group of visions (any artistic formation).
- The Symbol: The visible drawing.
- The Emblem: The engraved marks.
- The Inscriptions : The protruding marks
- The Photos: Man’s photos, whether the photo of the project owners or of others.
- The Register: The Trademark Register at the Ministry.
- The Committee: The Trademark Committee, provided for in the Law.
ARTICLE (3)
The following shall not be registered as a trademark or as a component thereof:
1. The mark which is not inherently distinctive, the mark that consists of merely the general commonly used words on goods, products or services, or familiar devices and ordinary pictures of goods and products.
2. Any mark violating the public morals or in the contrary of the public order.
3. The public emblem, flags and other symbols related to the State, Arab or international organizations or any institutions thereof, or any foreign country unless having an authorization therefrom, as well as any confusingly similar forms of the said emblems, flags or symbols.
4. Symbols of the Red Crescent or the Red Cross and other similar symbols as well as any confusingly similar forms of the said symbols.
5. Marks which are identical or similar to the symbols of pure religious nature.
6. Geographical names and indications where the use thereof may be misleading as to the origin of the goods, products or services.
7. The names, surname, photograph or emblem of a third party, unless he or his heirs’ prior consent to use the same has been obtained.
8. Degrees of honor which registration applicant cannot prove that he is lawfully entitled thereto.
9. Marks which may mislead the public or which contain false data as to the origin of products or services, or about their other characteristics, as well as marks containing an imaginary, imitated or forged trade name.
10. Marks owned by natural or legal persons, dealing with whom is forbidden.
11. Mark, the registration of which for some classes of goods or services may decrease the value of other goods or services distinguished by such mark.
12. Marks containing the following words or phrases: "Privilege", "Privileged", "Registered", "Registered drawings", "Copyright" or "Imitation is forgery" or similar words and phrases.
13. National and foreign decorations as well as coins and bank notes of currencies.
14. The mark, which is the translation of a well-known trademark or other prior, registered mark if this will confuse the public consumers as identical or similar goods covered by the mark.
ARTICLE (4)
1. The well-known mark whose reputation exceeds the borders of the original country of the trademark to other countries shall not be registered, unless so requested by its original owner, or upon an official power of attorney executed by him.
2. To determine whether the mark is well-known, the degree of recognition by the related consumer public as a result of the promotion of such mark is measured.
3. Well-known mark shall not be registered covering goods or services un-identical to those represented by such a mark if:
a. Use of that mark indicates connection between the goods and services which the mark represents and the goods and services provided by the owner of the original mark.
b. Use of the mark will prejudice the interests of the owner of the original mark.
ARTICLE (8)
A trademark may be registered in one or more of the classes of goods or services as per the International Classification and the Implementing Regulations. Multi-class applications are not allowed.
ARTICLE (10)
Without prejudice to the provision of Article (26) of this Law, it shall not be allowed to register any trademark which is identical or similar to trademark previously registered for the same classes of goods or services, or for goods and services of a different class if the registration of a mark under such class leads to an impression of an existing connection with the goods and services of the owner of the registered trademark, or if the use of such mark should prejudice the interests of the owner.
Where one or more persons apply simultaneously for the registration of the same trademark or closely similar or identical trademarks in respect of the same class of goods or services, the Ministry shall suspend the registration of all applications until an assignment attested by the disputed parties in favor of one of them is produced, or until a final judgment is rendered in favor of one of them.
ARTICLE (11)
The Ministry may impose whatsoever disclaimers and amendments it may consider necessary for defining and clarifying the trademark in a manner to prevent confusion with another already registered mark or for any other reason it may deem fit. Where for a certain reason the Ministry rejected a trademark or suspended registration on restrictions or modifications, the Ministry shall notify the applicant in writing of the reasons for such decision.
In all cases, the Ministry has to issue the decision for the application for registration within thirty days from filing date whenever it fulfills the conditions and terms specified in this law and its Implementing Regulations.
ARTICLE (14)
In case the Ministry has accepted the trademark, it has to publish the trademark in the Trade Mark Journal and in two daily newspapers issued in the State in Arabic Language, before registration, at the expense of the registration applicant.
Any interested party may oppose the registration of a trademark, and submit the written opposition to the Ministry, or send it to the Ministry by registered mail within thirty days from the date of last publication with a copy of the opposition to his application within fifteen days from the date of receiving such opposition.
The registration applicant has to file a written counter statement to such opposition to the Ministry within thirty days from the date of being notified with the opposition. If the counter statement is not received within the prescribed term, the applicant shall be deemed to have abandoned his application.
ARTICLE (16)
The trademark when registered, its registration shall be with effect from the application filing date.
The owner of the trademark shall, on completion of its registration, be furnished with a certificate containing the following particulars:
1. Registration number of the trademark.
2. Application filing date and registration date.
3. Trade name, or the name of the trademark owner, his nationality and domicile.
4. An identical copy of the trademark.
5. List of the products, goods or services covered by the mark, and their class.
6. The number and date of the International Priority and the name of the country party to the Paris Convention for the protection of Industrial Property in which the priority application was filed.
ARTICLE (17)
Whoever registered a trademark shall be deemed the exclusive owner thereof, and the ownership of a trademark may not be contested if used continuously by the person who asked for its registration for at least five years from the date of registration without a case raised against him regarding its validity. The owner of the mark has the right to prevent others from using an identical or similar mark to his for the protection of goods and services identical, similar or related to the goods and services for which the mark was registered and in a manner that may mislead the public consumer.
ARTICLE (18)
The owner of a previously registered trademark may, at any time, apply to the Ministry to add or amend the goods or services protected by such trademark, or to amend the mark itself in any manner not substantially affecting its identity.
The Ministry’s decision in respect of the application of amending the goods or services will be issued in accordance with the conditions and rules related to deleting some goods or services from the registered mark, as for its decision regarding the amendment of the mark, the same shall be issued according to the conditions and rules prescribed for the determination of the original registration applications, and such decision shall be subject to petition and appeal in the same ways.
Such amendment will be published in the Trademark Journal and in two daily newspapers issued in the State in Arabic Language on the expense of the applicant.
ARTICLE (19)
The protection period entailed by the trademark registration is ten years. The trademark owner may secure the continuation of protection for consecutive periods, each of which is ten years, if he submits an application for the renewal of the trademark during the last year of the current protection period, in accordance with the conditions and terms mentioned in this Law and its Implementing Regulation. The renewal of trademark registration shall be implemented without any additional examination, and without allowing others to oppose. The trademark registration renewal shall be published in the Trademark Journal and in two daily newspapers issued in the State in Arabic Language, at the expense of the trademark owner.
In case of a trademark renewal application, the entry of any change to the trademark, or the deletion or addition of any goods or services in the list of the goods or services for which the trademark has been registered, shall not be permitted. During the month following the expiration of protection period, the Ministry shall notify the trademark owner in writing, at his address appearing in the Register, of the expiration of validity thereof. If the trademark owner fails to apply for renewal within the three months following the expiration of protection period, the Ministry shall, of its own, cancel the trademark from the Register.
ARTICLE (21)
Without prejudice to the provision of Article (17), any interested party may apply for the cancellation of the trademark registration which was unlawfully registered. The Ministry shall cancel the registration whenever it receives a final judgment thereof accompanied by an executive statement.
ARTICLE (22)
The concerned civil court shall, on a request from any interested party, order the cancellation of trademark registration if it is proven that the trademark has not been seriously used for five consecutive years unless the owner of the trademark provides justification that the non-use of the mark was for reasons beyond his control.
Such reasons may be the restrictions on import and other governmental boundaries imposed on goods and services represented by that mark. For the purpose of this article, the use of the mark by a person authorized by the owner is the same as if being used by the owner himself.
ARTICLE (23)
Upon the request of any interested party the concerned civil court may order the addition of any particulars which might be ignored to be entered in the Register, the deletion or amendment of any statement if entered unlawfully therein, or is inconsistent to the truth. The Ministry may perform the same procedure of its own accord.
ARTICLE (25)
A trademark cancellation from the Register shall be published in the Trademark Journal and in two daily newspapers issued in the State in Arabic Language on the expense of the applicant.
ARTICLE (32)
The licensee shall not assign it to a third party or give sub-licenses unless the license agreement mentions otherwise. The compulsory use of a license to a trademark shall not be permitted in any case.
ARTICLE (37)
Any person who commits any of the following acts shall be punished by an imprisonment and by a fine not exceeding (5000) five Thousand UAE Dirhams, or by one of those penalties.
1. Whoever counterfeits a trademark which is duly registered or imitates it in such a manner as to mislead the public with regard to the goods and services represented by the original mark or the one similar to it, or mala fide uses a counterfeited or an imitated trademark.
2. Whoever intentionally puts a registered trademark owned by others on his products or uses that trademark unlawfully.
3. Whoever sells or offers for sale or circulation or possesses for the purpose of sale, products bearing a counterfeited or an imitated trademark, or unlawfully put, with his recognition. Also, whoever provides or offers to provide services under a counterfeited, imitated, or un-used trademark with his recognition.
ARTICLE (38)
Any person commits any of the following acts shall be punished by an imprisonment not exceeding one year, and by a fine not less than (5000) five thousand UAE Dirhams or exceeding – (10000) Ten Thousands UAE Dirhams, or by either of these punishments:
1. Uses a mark which is inapplicable for registration according to the provisions of items 2, 3, 4, 5, 6, 8, 9, 10, 11, 12, 13 and 14 of Article 3 of this law.
2. Writes a statement on his marks or trade papers, which leads to the belief that they have been registered or that they represent goods or services other that those mentioned in the Register.
ARTICLE (41)
The owner of a trademark may, at any time, even before raising any civil or criminal claim, file a petition supported by an official certificate testifying the registration of the mark, to ask for an order from the concerned court, in order to take the necessary precautionary measures, in particular the following:
1. Making a gathering procès verbal and a detailed description of machines and instruments which are being or had been used in the committal of any of the offences mentioned in this law, as well as local or imported products or goods, store signboards, envelopes or papers, etc. on which the mark, or the statement, the subject of the offence, may have been put.
2. Effecting the confinement on the above mentioned in the preceding item, after paying a money guarantee, to be fixed by the court, to compensate the person whose things have been seized, if deemed necessary.
The court may delegate one or more experts to assist in implementing the precautionary measures. In all cases, the precautionary measures taken by the trademark owner shall be deemed null if they are not followed – within eight days succeeding the issuance of the order – by raising a civil or criminal case against whom such procedures have been taken.
Owners of Internationally recognized marks are exempted from submitting a registration certificate of the mark in question.
ARTICLE (43)
The court may, in any civil or criminal case, order the confiscation of the seized things or which may be seized later, and deduct their price from the fines or compensations, or for the disposal thereof in any other manner deemed fit by the court. The court also may order the destruction of the unlawful marks, or, if necessary, order the destruction of the products, envelopes, packing materials and other things which bear such marks or bear illegal statements, and machines and instruments used in particular in the act of counterfeit. The court may order all the above actions even in the case of acquittal. The court may also order the publication of the judgment in the Trademark Journal or in one of the daily newspapers issued in the State at the expense of the convict.
Second Provision
A new Article under number (20) duplicate is to be added to the Federal Law Number (37) for the Year 1992 above mentioned stated as follows :
(The Ministry has the right to remove any trademark that has been unlawfully registered after notifying the related parties of the reason for such a removed and hearing their statements and defenses.
* Concerned parties have the right to appeal against the removed order at the concerned civil court within thirty days from the date of notification.