The United Arab Emirates (UAE) government passed the Federal Trademarks Law No. 36 of 2021 (“New Law”) which replaced the earlier Trademark law of 1992. The New Law came into effect on 2nd January 2022. The New Law has made considerable changes to the legal domain of trademark.
The New Law broadens the scope of a trademark to cover non-traditional marks including single-color, holograms, sound, scent, and three-dimensional markings.
The New Law has also broadened the list of non-registrable marks to include identical, similar, or copycat marks.
Marks that are simply translations, phonetic translations, or transliterations of previously registered or well-known trademarks are likewise ineligible for registration. A 3D mark in the shape of the product covered under registration may also be barred from registration.
The New Law expressly permits the assignment of a trademark with or without consideration. In addition, the New Law clearly states that trademark licenses do not need to be registered with the Ministry in order to be valid.
The New Law establishes a grievance committee headed by a specialized judge to be nominated by the Ministry of Justice and two other members to be appointed by the Ministry of Economy. The Committee will hear objections with respect to applications, oppositions, and cancellations against the decisions of the Trademarks Office. The decisions of the grievance committee will only be subject to appeal before the Federal Court of Appeal.
The New Law has increased the time frame for the examination of the application to 90 days and an adverse decision of the Trademark committee will have to be challenged within 30 days.
The New Law has increased the penalties for infringement and a fine between AED 100,000 to AED 1,000,000 can be imposed for counterfeit, imitation, or using a trademark in bad faith which is owned by another. The same fine is also applicable for knowingly importing and exporting counterfeit products.
Custom authorities as per the New Law may stop the clearance of the shipment for 20 days for the products that are in violation of the trademark law.
The New Law also provides detailed procedures for provisional measures that could be taken to ensure compliance with the trademark law. This includes (1) seizure of materials, tools, and equipment used in the infringement (2) preventing the infringing goods from entering the market (3) preserving evidence related to infringement. These provisional measures may also be ordered ex parte in urgent matters.
The Trademark Law of 2021 will ensure that the trademarks are effectively protected in the country which will boost investor confidence in the nation and its judicial process.
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