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Evolution Of The New Trademark law In United Arab Emirates (UAE) , Just like humans evolve over time with respect to the evolving demands and needs of the society, similarly, Laws also require evolution with respect to the changing environment and needs of the society. Laws that do not evolve with time, fail to provide equitable justice to the citizens of that country. The Trademark Law in United Arab was not very well structured until very recently a new legislature was introduced, promising prominent changes in the TM Law of United Arab Emirates (UAE). The new legislature on Trademark Law, i.e. -The Federal Decree Law (36 of 2021), is a step toward providing rights to people as per Article 14, Chapter 2 of The Constitution of United Arab Emirates, which talks about equality and justice.
The expanse of TradeMark Law has spread-out through this amendment, the protection now covers three-dimensional trademarks, holograms and sound trademarks. This amendment also includes registration of geographical names of trademarks or productsuni whose name is associated with the names of specific geographic regions or countries and are famous for producing a certain product.
Following are some of the changes highlighted in the new TM Law [Federal Decree Law (36 of 2021)]:
- Multi-class applications:
With the new Amendment, now the United Arab Emirates (UAE) trademark office will also allow applicants to apply for trademarks and include multiclass in single applications, which wasn’t available before the amendment. Earlier only single class applications were applicable under the law.
- Assignment of pending applications:
The new Law of Trademark now gives applicants the right to transfer ownership during the assignment of pending applications. The practice did not allow assignment of pending applications before, it was required that the marks should be fully registered in order to be assigned.
- Appeal of Ministerial decisions go directly to the Federal Appeal Court:
To expedite the process of dispute settlement, the applicants now take the dispute to higher court stage directly rather than going to First Instance Court. The appeal is made by the applicants or opponents against the decision which is issued by Ministry of Economy. The basis of this change is that the Grievance Committee has been set up in the ministry and in that introduced a statutory obligation to include a judge at the said committee. The committee will be hearing all the objections to decisions which are issued by the Trademarks office. The decision from the said committee can be appealed to the Federal Appeal Court.
- Duration of appeal to court:
The duration to make an appeal which was 60 days previously has been reduced to 30 days. This change in the limitation for appeals will expedite processes and limit frivolous litigation.
- Criteria for “well known” or “famous” TM:
Under the New Trademark Law, the criteria for considering a trademark as well-known has been clarified, which includes that (a.) the extent to which it is known to the concerned public as a result of its promotion, (b.) the period of its registration, its use, (c.) the number of countries in which it is registered or well-known, (d.) its value, or (e.) the extent of its impact on the promotion of goods or services that use the well-known Trademark to distinguish them.
- Custom Seizure of Infringed Trademarks Goods:
In the New trademark Law, Customs has now been given power to seize imported good which infringes trademarks rights. This provision wasn’t there before the amendment and introduction of this would make sure that no good which bears the registered mark or trademark is circulated within the territory of United Arab Emirates (UAE). If the alleged goods infringe trademark rights it would be stopped from shipment clearance for 20 days, after a request is filed by the owner of infringed trademark with the customs authorities for the seizure of imported goods.
- Temporary protection of trademark:
In the New Trademark law, it has been clearly mentioned and it assists owners of temporary marks to register their marks and participate freely for temporary events and exhibitions. Since United Arab Emirates (UAE) is a hub for these type of activities and events which are organized all around the year for all sectors. The foreign participants can now mitigate their risks and move to use this service by the United Arab Emirates UAE trademark to register their marks temporarily and enter in such venues regardless of pre-existing rights.
- Geographical indications (GI):
Geographical Indication (GI) is new addition to the IP legislation in United Arab Emirates (UAE). These were not regulated before. These are defined in the New Law as any indication showing that a good has originated in the territory of a member country of the world trade organisation or in a region, location or place of that region if that good’s quality, reputation, or other Character are primarily due to its geographical origin.
Introducing these articles to the Trademark Law will give some guidance to trademark owners, judges and all interested parties in GIs.
- Sanctions and higher penalties:
The new Law of trademark Law, has increased the penalties in cases of violation of trademark right. Article 39 specifically talks about that, where the penalty for copyright infringement is increased to a maximum of AED 50,000 to AED 100,000 and previously the the maximum amount of penalty was AED 10,000 – AED 50,000. Article 40 also introduces new more severe penalties for (a) manufacturing or importing counterfeit works; (b) disrupting or impairing electronic data aiming at managing copyrights; and (c) downloading or storing computer programmes, applications or databases without a licence from the author or rightsholder. The offences mentioned above now carry a minimum imprisonment of 6 months and/or a fine of between AED 100,000 – AED 700,000 which was previously minimum 3 months imprisonment and fine of AED 50,000 – AED 500,000. It is to be noted here that higher penalties will be given to reoffenders now.
- Recordal of TM license agreements:
With the new Trademark Law, the recordal is no longer a barrier against parties which are Licensor and Licensee, to rely on such relationship against parties. This is going to help the brand owners particularly who are seeking to enforce trade mark rights for a mark that is used under licence by an authorised licensee.
- Definition of marks:
The previous definition of Trademarks was very broad, the recent amendment has given a more elaborated definition of Trademark, out of which some includes like distinctive smell, sound marks, three dimensional mark, hologram marks etc. The inclusion of which will give relief to people of certain sectors who didn’t have the rights before.
- Publication of accepted trademark:
Earlier the Trademark Law used to require a publication of accepted Trademarks in local newspapers but with the new Amendment this has been done away. The new arrangement requires only a publication in official gazette which is managed and released by the UAE Ministry of Economy. This will not only assist in reducing costs on applicant but also avoid unnecessary arguments about the cut off date for opposition proceedings.
The aforementioned changes reflect on innovative and noteworthy concepts and changes introduced in the Trademark Law of United Arab Emirates (UAE). The purpose of legislations is to give recognition to the rights of the people and to make sure that the rights are exercised by the owner or applicant without any hassle. With these changes it can be seen how the legislature has been framed in an inclusive and incorporative manner. This is a gigantic step in the realm of Intellectual Property, as the new Trademark Law will provide the rightful owners with a range of mechanisms for the protection and enforcement of their trademark rights. The wait is now to see the implementation of these laws and the repercussions thereafter.
Author: Vikramaditya Singh – a Litigation Associate at Khurana & Khurana, Advocates and IP Attorney, in case of any queries please contact/write back to us via email email@example.com.