United Arab Emirates (AE)
04-02-2013 (Newsletter Issue 4/13)
10th Edition of Nice Classification
The UAE Trademark Office has recently shifted its trademark classification system from the 9th edition to the 10th edition of the Nice International Classification for Goods and Services, which entered into force on January 1, 2012 and applies to new applications only.
Source: Saba & Co. IP – Head Office, Lebanon
03-12-2013 (Newsletter Issue 3/13)
New Automatic Search System Implemented by TM Office
The Trademark Office of the United Arab Emirates announced that it has started implementing a new automation search system which will only reveal the identical marks and not the confusingly similar marks.
07-30-2012 (Newsletter Issue 12/12)
Changes in TM Routine
The head of the Trademark Office in the UAE advised that it has been decided to change some stipulations related to the issuance of the final registration certificate of a trademark.
It is been stated that the filing number will become the registration number of the mark. This new change will apply to pending applications as well as new ones.
Source: NJQ & Associates
02-14-2010 (Newsletter Issue 8/10)Collection of Trademark Fees ChangedStarting from February 14, 2010, the publishing fees for the Trademark Bulletin shall be collected within 30 days from the applicant being notified of accepting the filing of the application. Trademark registration fees shall be collected within 30 days from the elapse of the 30 day opposition period starting from the publication date.
Source: JAH & Co. IP and www.ag-ip-news.com
01-21-2010Arabic Domain Passes ICANN String EvaluationOn January 21, 2010, the Internet Corporation for Assigned Names and Numbers (ICANN) announced that the United Arab Emirates, Saudi Arabia, Egypt and Russia are the first four countries to meet a specific set of linguistic and technical requirements required under the ICANN’s IDN (Internationalized Domain Name) ccTLD Fast Track String Evaluation.
For more information please click here
Legal basis is the Federal Trademark Law No. 8 for the year 2002 which amended some articles of the Federal Law No. 37 of 1992, last amended September 2001. The United Arab Emirates have one common (Federal) Trademark Law which covers the seven emirates of Dubai, Abu-Dhabi, Sharjah, Ras Al-Kaimah, Ajman, Fujairah and Umm Al-Quwain.
Trademark protection is obtained by registration. It can also be acquired by sufficient public recognition.
Nice classifcation, 10th editon
Exceptions: Classes 32 and 33. Trademark protection cannot be achieved for alcoholic beverages.
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, emblems, combinations or shades of colours, three-dimensional forms, the three-dimensional form of a good or its packaging and any combination of the mentioned signs.
The following trademark types are registrable: trade marks, service marks, collective marks, certification marks, trade names and titles of establishment.
The application is filed at the Trademark Office.
A separate application has to be filed for each class.
Tradesmen only may apply for trademarks.
Similar trademarks may be protected together with the main trademark as associated trademarks for the same owner, in case the main elements are similar and the differences irrelevant.
Foreign applicants need a local agent.
A notarised power of attorney authenticated by a consulate of the Emirates is necessary.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use or if there is a foreign registration in countries following substantive examination of trademarks.
The processing time from first filing to registration is approx. 12 to 15 months.
Before registration, the trademark application is published in the Trademark Bulletin as well as in two local daily Arabic newspapers within 30 days from the approval of the publication form, otherwise the application shall be considered cancelled. The cuttings of the notices are to be submitted to the Trademark Office.
The publishing fees for the Trademark Bulletin shall be collected within 30 days from the applicant being notified of accepting the filing of the application.
And the trademark registration fees shall be collected within 30 days from the elapse of the 30 day opposition period starting from the publication date.
The opposition period is 30 days from the date of the last publication since a trademark application is published in the Trademarks Journal and two local newspapers in accordance with the Federal Trademark Law.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
not a member of the Madrid Agreement or Protocol.
A trademark registration is valid for 10 years from date of application, renewable for periods of 10 years.
The grace period for renewals is 3 months from the expiration date of the trademark.
If the trademark has not been used within 5 years from registration, it may be subject to cancellation.
These are the official fees from first filing to registration (including publication):
Filing for an application in one class: USD 136.00 (approx. EUR 100.00)
Publication in the TM Journal: USD 136.00 (approx. EUR 100.00)
Publication in 2 local newspapers: USD 185.00 (approx. EUR 136.00)
Final Registration charges: USD 1362.00 (approx. EUR 1,000.00)
Trademark Licence Agreement
In In the United Arab Emirates a licence agreement has to be in writing. It is not permitted to license the use of unregistered marks. A trademark may be licensed for some or all of the goods or services in respect of which the trademark is registered. The sale of a registered trademark does not automatically terminate the licence. There are no specific statutory provisions in the UAE Civil or Common Law stipulating terms or conditions for the licensing of trademarks. The term of the licence depends upon the agreement between the parties but should not exceed the term of protection of the trademark registration.
There are no provisions in law for the recordal of a licensee. Recordal is voluntary, but a licence will not have any legal effect vis-à-vis third parties unless it is recorded and published. There is no time frame for a recordal and there is no prescribed form or content for the validity of a licence agreement. The terms and conditions agreed upon between the parties will constitute the licence agreement.
The following documents are required for a recordal:
1. A power of attorney in the name of the licensee, duly legalised up to a Consulate of the United Arab Emirates.
2. A legalised copy of the licence agreement executed by both parties
3. A simple copy of the registration certificate of the mark
When the licence agreement is recorded in the Trademark Register and published in the Official Gazette it will be effective and enforceable vis-à-vis third parties from the application date of the recordal. The licence is published in the Official Gazette of Trademarks and in two local newspapers.
There is an evidentiary presumption that use of a recorded licensee is permitted use. The licensee may not join the trademark owner in infringement proceedings. An infringement action can only be defended by the legitimate owner of the trademark. The licensee may call upon the owner to institute infringement proceedings. Nevertheless the licensee may not institute proceedings related to the trademark registration in his own name at any time even if the proprietor refuses or neglects to do so.
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We would like to thank the following law firms for their assistance in updating the information provided:
01-10-2012JAH & CO. IP
, Doha, Qatar
Abu-Ghazaleh Intellectual Property UAE, Dubai, United Arab EmiratesLicensing
12-15-2011JAH & CO. IP
, Doha, Qatar