12 Jan 2022

Significant changes to trade mark practice in the UAE following accession to the Madrid Protocol and issuance of a new trade mark law

Authored by: James Dunne and Rami Omar

In Brief:

  1. At the end of 2021 and beginning of 2022, the UAE introduced a new trade mark law and joined the Madrid Protocol.
  2. These are only some of the widespread changes to the intellectual property framework in the UAE which have taken place over the past few months. These include new data protection, copyright and patent/design laws.
  3. Brand owners will now be able to benefit from increasingly more cost-effective and easier means to protect, commercialise and enforce their trade mark rights in the UAE.

Overview

On Saturday 27 November 2021, the largest legislative reform in the history of the UAE was announced.

Over forty laws, covering a range of areas, were included in these changes, and comprised either amendments to existing laws or the introduction of new laws. Announced in the ‘Year of the 50th’ following the formation of the UAE in 1971, the reforms aim to strengthen economic, investment and commercial opportunities in the UAE and also enhance the rights of individuals and entities in the UAE.

From an intellectual property perspective, the reforms included:

  • A new trade mark law (Federal Law No. 36 of 2021 on Trademarks)
  • A new copyright law (Federal Law No. 38 of 2021 on Copyrights and Neighbouring Rights)

These follow other significant legislative developments over the course of 2021, including:

  • A new Federal data protection law (Federal Law No. 45 of 2021 on the Protection of Personal Data Protection) which came into effect on 2 January 2022
  • A new patent, utility model and design law (Federal Law No. 11 of 2021 on Regulation and Protection of Industrial Property Rights) which came into force on 30 November 2021.

This summary note will focus on the new trade mark law.

New Trade Mark Law

Federal Law No. 36 of 2021 on Trademarks (the New TM Law) came into effect on 2 January 2022 and replaces the previous trade mark law (Federal Law No. 37 of 1992).

While the Executive Regulations, which will provide further details on the implementation of the New TM Law, have not yet been issued, the New TM Law introduces a number of key changes which further enhances trade mark practice in the UAE

Some of the key changes of most interest to brand owners include:

Multi-class applications

  • Until now, the UAE (like other GCC countries), was a single-class jurisdiction.
  • This meant that each class to be protected by a trade mark required a separate application for each class.
  • A move to a multi-class system should make the registration and renewal costs cheaper for brand owners. In particular, for those brands that offer a range of related goods which fall in different classes, it should enable ‘related classes’ to be covered within the available budget. For example, Class 25 (for clothing, footwear, headgear) and Class 18 (luggage and bags).
  • The mechanism by which multi-class filings can take place will be set out in the Executive Regulations.

Non-conventional trade marks

  • A trade mark functions as a ‘source identifier’ or ‘badge of origin’ and enables consumers to identify the goods or services of one trader from those of other traders in the marketplace.
  • The definition of a ‘trade mark’ under the New TM Law has been expanded considerably and now includes a wider range of ‘non-conventional trade marks’.
  • These ‘non-conventional trade marks’, which include 3D marks, holograms, sound marks and smell marks, reflect the changing nature of what the marketplace considers a trade mark can be.

Clarification of a ‘well-known’ or ‘famous’ trade mark’

 

  • While the previous trade mark law referred to ‘well-known’ or ‘famous’ trade mark’, the New TM Law provides very useful clarification on the criteria to be met in order to qualify as a ‘well-known’ or ‘famous’ trade mark’.
  • These criteria are:
  1. The extent to which the public is aware of the trade mark as a result of its promotion;
  2. For how long the trade mark has been used;
  3. The number of countries in which the trade mark has been registered or has become famous;
  4. For how long any registrations have been in place; and
  5. The value or effect the trade mark has on the promotion of the good or services offered under that trade mark

Appointment of a Grievance Committee

  • A ‘Trade Mark Grievance Committee’ is to be established, headed by a specialist judge (to be appointed by the Minister of Justice) and assisted by two experts (to be appointed by the Ministry of Economy).
  • This Grievance Committee will hear all objections in relation to trade mark applications, opposition proceedings and cancellation actions.
  • Importantly, an appeal against a decision of the Grievance Committee will be to Court of Appeal rather than the Court of First Instance.
  • The specialist nature of the Grievance Committee should facilitate quicker (and cheaper) processing of objections,
  • Should a party decide to appeal a decision of the Grievance Committee, further costs are saved by avoiding the need to first appeal to the Court of First Instance and then to the Court of Appeal (as was previously the case).

Cancellation actions before the Ministry

  • In a very significant change, trade mark cancellation actions can now be brought before the Ministry of Economy rather than the courts.
  • This should significantly reduce the time and cost for any cancellation actions.
  • In addition, it will be of particular benefit to those brand owners who identify unauthorised trade mark registrations for their brands which have been obtained by third parties.

Recordal of trade mark licences

  • The New TM Law resolves the question as to whether or not a trade mark licence must be recorded in order to be effective.
  • While the New TM Law provides that any licence agreement must be in writing and notarised (and we would suggest legalised where a party is outside the UAE), it clearly states that recordal of the licence on the trade mark register is not required.
  • This will be of particular assistance to those brands owners seeking to enforce trade mark rights for a mark that is used under licence by an authorised licensee.

These are only some of the changes introduced under the New TM Law and we will circulate a more detailed analysis once the Executive Regulations are issued. In the meantime, it is clear that these changes are intended to further streamline the trade mark framework in the UAE.

Accession of the UAE to the Madrid Protocol

Another significant trade mark development in 2021 saw the UAE become the 109th member of the Madrid System when it joined the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the Madrid Protocol). This entered into force in the UAE on 28 December 2021.

The Madrid Protocol and the Madrid Agreement (both forming the Madrid System) enable brand owners in one member country to protect their trade marks in any of the other 108 member countries by filing a single international application through their national trade mark office and via the World Intellectual Property Organisation (WIPO) in Switzerland.

In practice, this means that local brand owners in the United Arab Emirates will be able use the Madrid Protocol to protect their trade marks in other Madrid members by filing a single international application and paying a single set of fees. Equally, countries that are members of the Madrid Protocol will be able to file international applications that designate the UAE. The mechanism for the operation of Madrid Protocol filings in the UAE is expected to be announced shortly.

However, not all countries are members of the Madrid System. For example, and on a regional level, the Gulf Cooperation Council (GCC) comprises the UAE, Bahrain, Kuwait, Oman, Qatar and Saudi Arabia. Of these six GCC countries, only the UAE, Bahrain and Oman are Madrid members. National filings are therefore required in Saudi Arabia, Kuwait and Qatar.

Additionally, there may be instances where it is more cost effective, strategically important, or both, to file a national application directly in the UAE rather than via the Madrid Protocol.

Lastly, even where a trade mark filing program uses the Madrid Protocol, there will still be a need to appoint a local representative in a particular country in the event that an objection during examination, or opposition during publication, arises in that country.

Careful consideration of the various factors should be taken into account when structuring a trade mark filing program and determining whether national filings, Madrid applications, or a combination of both, is the most appropriate mechanism to roll out protection of a trade mark.

Conclusion

The latter half of 2021 and early 2022 has seen very significant changes in trade mark practice in the UAE. With the benefit of the soon to be announced Executive Regulations, the changes implemented by the New TM Law will provide brand owners with a broader range of mechanisms for the protection, commercialisation and enforcement of their trade mark rights.

In parallel, the accession of the UAE to the Madrid Protocol provides a further means by which brand owners, both within the UAE and internationally, have access to securing trade mark registrations outside their home countries.

We will provide a further update when the Executive Regulations for the New TM Law are issued and guidance for the Madrid Protocol is handed down.

In the meantime, if you would like more information, or have any questions, please contact James Dunne on j.dunne@hadefpartners.com, Rami Omar on r.omar@hadefpartners.com, or your usual Hadef & Partners contact.