Well-Known Trademark Under The New UAE Trademark Law

27th June, 2022 - 12:12 pm Categories: Trademark 0 Comments

In late 2021, to mark the 50^th anniversary of the United Arab Emirate’s formation, the United Arab Emirates government introduced fifty new legislation. One of the long-awaited new laws was the United Arab Emirates Trademarks Law – Federal Trademarks Law No. 36 of 2021 (the “New Law”). With the introduction of the new law, United Arab Emirates joined the Madrid protocol.

The United Arab Emirates’ trademark protection has long been a grey area, as the Trademark Law (Federal Law No 37 of 1992) and later amendments were quiet on the subject. By allocating a dedicated article to it, the new United Arab Emirates trademark legislation has improved its stance on the registration of well-known trademarks.

What is Trademark and what is not?

‘Trademark’ as per the new law is defined under Article 2 as-  A Trademark includes

• Any distinctive shape of names, words, signatures, letters, Symbols, numbers, addresses, seals,
• Drawings, Pictures, Engravings, packaging, graphic elements, forms, colour or colours or a combination thereof, a sign or a group of signs,
• Three-dimensional marks (3-D),
• Hologram Marks,
• Any other mark used or intended to be used to distinguish the goods or services of a facility from the goods or services of other facilities,
• To indicate the performance of a service, or to conduct monitoring or examination of goods or services.
• A distinctive sound and smell may be considered as a Trademark.

Article 3 mentions a list that shall not be considered or registered as Trademark-

• A mark having no property or distinctive character
• Breaching the public morals or violating the public order
• Emblems, flags, currency, coins, etc.
• Marks similar to symbols of religious nature
• Geographical names as f their use would create confusion as to the origin or source of the goods or services
• Symbols of Red Crescent or Red Cross, etc.
• Marks owned by physical or juristic persons
• Marks whose registration for some goods or services results in reducing the value of the goods or services distinguished by a previous Trademark.
• Marks that constitute copies, imitations, translations, localisations, or any audio translation of a well-known Trademark or part thereof owned by others, for use in distinguishing goods or services identical or similar to those that use a well-known Trademark to distinguish them, etc.

What are Well-known trademarks?

The New Trademark Law provides useful clarification on the criteria to be met in order to qualify as a ‘well-known’ trademark. These criteria are mentioned under Article 4 of the Federal Decree-Law No. 36 of 2021 as –

• The extent to which the public is aware of the trade mark as a result of its promotion;
• for how long the trade mark has been used;
• The number of countries in which the trade mark has been registered or has become famous;
• For how long any registrations have been in place; and
• The value or effect the trade mark has on the promotion of the good or services offered under that trade mark

Registration of a Well-known Trademark

As per the new United Arab Emirates Trademark Law, well-known trademarks may not be registered to distinguish between goods or services that are not identical or similar to those distinguished by these Trademarks in two situations. Mentioned below are those two situations:

• If the use of the Trademark indicates the presence of a connection between the goods or services required to be distinguished and the goods or services of the owner of the well-known Trademark.
• If the use of the Trademark would hurt the interests of the owner of the well-known Trademark.

A well-known Trademark whose reputation has exceeded the territory of the country in which it was registered to other countries, may not be registered for identical or similar goods or services unless an application is submitted to that effect by the owner of the well-known Trademark or with his approval.

How does the New Law differ from the previous United Arab Emirates Trademark      Law?

The previous United Arab Emirates Trademark Law did not mention any criteria for determination of a ‘well-known’ trademark. It only stated the extent of the concerned public knowledge of a trademark promotion should be considered.

The New Law has removed the obscurity around the protection of well-known trademarks in the United Arab Emirates. The criteria mentioned in the new law to determine the well-known trademarks are befitting with those expressed in Article 2 of Joint Recommendation of The Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of the World Intellectual Property Organization (WIPO).

The improvement in protection of well-known trademarks in the United Arab Emirates is regarded as a chief highlight of the new law.

The United Arab Emirates- A member country to the Madrid Protocol

With the enactment of the New Law, the United Arab Emirates associated and became the 109^th Member of the Madrid System when it joined the Protocol Relating to Madrid Agreement Concerning the International Registration of the Marks also called the Madrid Protocol.

The Madrid System consists of both the Madrid Protocol and the Madrid Agreement entitles brand owners in one member country to protect their trademark in any of the other member countries by way of filing a single international application via their national trade mark office and the World Intellectual Property Organization in Switzerland.

In effect, this implies that local brand owners in the United Arab Emirates will be able to protect their trade marks in other Madrid members by filing a single international application and paying a single set of costs through the Madrid Protocol. Members of the Madrid Protocol will also be able to file international applications designating the UAE. The system for operating Madrid Protocol filings in the United Arab Emirates is scheduled to be published soon.

Lastly,  if a trade mark filing programme follows the Madrid Protocol, appointing a local representative in a particular country will be required in the case of an objection during examination or resistance during publication in that country.

The United Arab Emirate’s trade mark procedure has changed dramatically in the second half of 2021 and the first half of 2022. The improvements made by the New Trademark Law will give brand owners with a wider choice of procedures for protecting, commercialising, and enforcing their trade mark rights, according to the soon-to-be-announced Executive Regulations.

The Madrid System, however, does not include all countries. On a regional level, the Gulf Cooperation Council (GCC) includes the United Arab Emirates, Bahrain, Kuwait, Oman, Qatar, and Saudi Arabia. Only the UAE, Bahrain, and Oman are Madrid members of the six GCC countries. As a result, national filings are necessary in Saudi Arabia, Kuwait, and Qatar.

In addition, the United Arab Emirate’s accession to the Madrid Protocol opens a new avenue for brand owners to secure trade mark registrations outside of their native nations, both within the United Arab Emirates and globally.

Author: Shobhita Saran a student of GGSIPU, in case of any queries please contact/write back to us via email chhavi@khuranaandkhurana.com. or at Khurana & Khurana, Advocates and IP Attorney.