A new federal law, No.8 of 2002, amending the trademark Law No.37 of 1992, was recently issued in the UAE. The new law was published in the Official Gazette No.384 on the 31st of July 2002, and became effective immediately from the date of publication.
A quick view of the new law shows that it mainly strengthens and broadens the rights of trademark proprietors, particularly the owners of famous trademarks. The new law also clarifies, and in some cases simplifies, the registration procedures. It includes some additions, such as adding two new terms to Article 1, and two new additions to the list of unregistrable marks. One of the additions in Article 1 is the reference to the necessity of publication in the Trademark Journal as a source of legality for trademark application, registration, amendment or cancellation.
The President of the UAE, Sheikh Zayed Al-Nhayyan, has signed a new federal law, Law No. 8 of 2002, amending the UAE Federal Trademark Law No. 37 of 1992. The new law was published in the Official Gazette no. 384 on the 31st of July 2002 and became effective immediately as stated in Article 3 of the said law.
According to the new law, the Ministry of Economy and Commerce is entitled -without a court order- to cancel a registration in case a trademark has been incorrectly registered. The Ministry’s decision can be appealed within 30 days.
In Article 3, which lists the unregistrable marks such as the symbols of government, two additions have been made:
- Foreign or national decorations (i.e. medals or titles) as well as coin and paper currencies.
- A translation or reinterpretation of an existing and registered trademark, in case registration may confuse the public.
Article 4 deals with internationally ‘famous marks’, preventing their registration except upon the consent of the original owner. Famous marks shall not be registered to distinguish goods or services that are not identical or not similar to those originally correlated with these marks, if such registration may imply a connection between the services or goods of the owner of the original mark and those included in the recent registration, or if it may harm the interests of the owner of the original mark.
According to the new law, a trademark can be registered in a number of classes in accordance with the International Classification; but a separate application should be filed for registration in each class.
The Ministry of Economy is entitled to impose restrictions and modifications to distinguish a new application from an already registered mark to avoid possible confusion. The Ministry shall notify the applicant in writing of the reasons of such suspension or refusal.
The acceptance of a trademark must be published in the Trademark Journal and in two daily Arabic-language newspapers, before registration, and at the expense of the applicant. This allows for any opposition claims by any third party to be forwarded within 30 days.
Moreover, the new law states that once the trademark registration is complete, protection is retroactive to the date of filing the application.
Upon the completion of the registration a certificate is issued including the registration number, application filing and registration dates, details of the trademark owner, and identical copy of trademark, description of products, goods or services and their class. This article also includes a reference to the Paris Convention for the Protection of Industrial Property. The certificate shall also include the number and date of the international priority right and the name of the member country of the Paris Convention in which the priority application was filed.
The owner of a registered trademark can file an application to add, delete, or otherwise amend the goods or services distinguished by the trademark or to amend the trademark itself as long as the amendment does not considerably change the identity of the trademark.
The Ministry shall consider the suggested amendment(s), and if approved, then it shall be published in the Trademark Journal and two daily Arabic-language newspapers at the expense of the applicant.
A completed registration of a trademark entails a ten-year protection period. Protection is renewable for indefinite periods of ten years each. The trademark owner is given a three-month grace period after the deadline but will automatically lose the ownership of the trademark if this period is also missed. The renewal shall be published in the Trademark Journal and in two daily Arabic-language newspapers at the expense of the trademark owner.
Article 22 is a modified version of the same article in Law 37 of 1992. It states that an interested party can apply for a cancellation of a trademark registration due to nonuse of that mark for five consecutive years. However, if this nonuse were beyond the owner’s control, such as import restrictions and other governmental conditions, then there would be no cancellation. This article also states that the use of a trademark by a party authorized by the owner is considered as use by the owner himself.
The Civil Court can, upon the request of an interested party amend a registered trademark by deleting, adding, or otherwise altering the trademark.
Article 25 of the new law stipulates that the cancellation of a trademark registration must be published in the Trademark Journal and in two daily Arabic-language newspapers at the expense of the applicant.
Article 32 stipulates that, unless the license agreement states otherwise, the licensee shall not assign his license to others or issue a sub-licensing of a registered trademark. It further states that compulsory licensing is equally prohibited.
Article 38 lays out the punishment for use of an unregistrable trademark and for misleading the public into believing in the legality of a trademark. This article adds a new punishable act to those listed in Law 37, which is misleading the public into believing that certain products or services not included in the register are registered or correlated with his mark. The violator could face up to one-year imprisonment and/or a fine between AED 5.000-10.000.
Article 41 states that the owners of famous trademarks are exempted from providing a proof of trademark registration.