The United Arab Emirates has been exerting continuous efforts to modernize its legislations especially after it joined WTO. Accordingly, the UAE has started amending all its existing IP laws to ensure their conformity with TRIPS Agreement. The New Federal Law No. (8) of 2002 for Trademarks, the Federal Law No. (7) of 2002 for Copyright and Patents and Designs Draft Laws came within this context.
The New Federal Law No. (8) of 2002 was issued to amend the Trademarks Law No. (37) of 1992. The Law was published in the Official Gazette and became effective immediately as of the date of its 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.
The Law dealt with internationally “ famous marks”, preventing their registration except upon the consent of the original owner. 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 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 parties to be forwarded within 30 days.
Article (16) stated that 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.
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.
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.
As far as Patents and Industrial Designs are concerned, a new proposed Law amending Law No. 44 for the year 1992 pertaining to the Industrial Regulation and Protection of Patents, Industrial Drawings and Designs is under study and is expected to be approved and published in the near future.
In terms of registration, once an application for a letters patent or utility certificate has been filed, the Department of Industrial Property examines it. Once approved, it is issued and published in the Industrial Property Circular.
The law gives any interested party the right to file a petition to oppose the decision of the acceptance or rejection of the application. The Department of Industrial Property can also receive applications for international patents in accordance with the international treaties signed by the UAE.
The term of the letters patent shall be a period of 20 years, and 10 years for a utility certificate as of the date of filing the application.
Assignment may be restricted to one or more rights provided in the letters patent or utility certificate. Once registered, it comes into force after its publication in the Industrial Property Circular.
The draft law includes the terms of punishment for submitting false or incomplete information to obtain letters patent or a utility certificate, as well as illegal use of a patent, drawing or design, in part or as a whole. Article 62 puts the imprisonment terms from 3 months to 2 years and/or a fine between AED 5,000 and AED 100,000.
The New Federal Law No. (7) of 2002, Pertaining to Copyrights and Neighboring Rights was issued and became effective upon publication in the Official Gazette. The said Law annulled the Federal Law No. (40) of the year 1992.
The eight sections of the law cover a wide scope of copyrights and the means of protection as well as specific details of the rights of authors and their successors.
The Law dealt with the scope of protection listing copyrights and neighboring rights including books, essays, computer programs, music compositions and others. The Law also elaborated on the rights of the author and his successors asserting on the financial and literary rights of the copyright holders and their successors.
The new Law defined the protection period for the financial rights of the authors, joint authors, authors of collective works, authors of applied art works, performers, producers of phonograms and broadcasting organizations. In general, protection consists of two phases, the author’s lifetime and a period ranging from 20 to 350 years following his death.
Finally, the new Law laid down the imprisonment sentences and fines imposed on infringers of copyrights. Worth noting here is the emphasis on the issue of forging or copying computer programs and applications. Courts are given the authority to impose a wide spectrum of penalties that reach the closure of a whole company where the forgeries were made.
AGIP / UAE