Trademark Registration in Dubai, UAE – How to Register a Trademark in Dubai, UAE

Trademark Registration in Dubai, UAE - How to Register a Trademark in Dubai, UAE

In Dubai’s busy commercial hub, the process of trademark registration enables the protection of intellectual property. It will look toward trademark registration in Dubai for all sorts of legal protection to get distinguished in the highly competitive business market of the UAE. It provides legal protection and exclusive rights for using a unique mark, logo, or any other design that clearly distinguishes a firm’s product or service.

 

Trademark registration in Dubai, UAE, is done in detail and involves a couple of steps and considerations. All business owners need to understand the eligibility criteria, new application procedure, and the probable issues that may be raised against them. From the search examination stage to the stage of publication and opposition, each and every single stage is crucial. What will follow is a discussion of the advantages that are available through registration, the registration regime, and other considerations that may come from the post-registration operations of businesses in Dubai and, for that matter, the UAE market at large.

UAE Trademark Law Overview

Key Legislation

The subject of trademarks is a highly developed legal regime in the United Arab Emirates. At the heart of this regime lies Federal Decree-Law No. 36/2021 on Trademarks, which sets the general framework for the registration, protection, and enforcement of trademarks in the UAE.

This law provides for the definition of a trademark as any sign or any combination of signs capable of distinguishing goods or services of one undertaking from those of others. The definition is quite general and covers very diverse elements since it includes:

  • Names
  • Words
  • Signatures
  • Symbols
  • Numbers
  • Colors
  • Marks in the form of a hologram
  • Three-dimensional marks

 

The Act also provides that even distinctive sounds or smells may be considered trademarks.

The “Trademarks Register” kept by the Ministry of Economy represents an official record for all registered trademarks, their owners’ details, and relative change. This registration regime allows applications to be filed by individuals or entities, and it can cover several categories of either goods or services in a single application.

Once registered effectively, a trademark in the UAE is lawfully protected for ten years starting from the filing date of the application. Trademark owners may renew their application during the protection period and subsequent similar periods, as provided in the Implementing Regulation.

It is key to point out that the registration of a trademark may be canceled in two cases. These are non-use for five consecutive years and a registration that infringes on the law.

Disputes as to the ownership of a trademark, or its amendment, or addition to the Register, may be subject to the Competent Court or be settled by the Trademarks Grievances Committee.

It also discusses various types of trademarks, such as:

Collective marks

Control marks

Badges of public interest

Geographical indications

Each of the above-mentioned classifications is subject to particular conditions and controls upon registration or application for use.

Recent Developments

The UAE has recently been through a significant amount of legislative overhaul, and one area in this regard that has been impacted hugely is trademark law. Federal Trademarks Law No. 36 of 2021 became effective on January 2, 2022, and completely repealed in its entirety Federal Law No. 37 of 1992. This constitutes the first comprehensive amendment to the trademarks law since the enactment of the previous law.

Some major changes brought in by the new law include:

Introduction of the broad definition of trademarks to include much more than merely traditional marks, such as 3D trademarks, single colors, holograms, sounds, and smells.

Explanation of the threshold for deeming a trademark well-known, based on several elements, the most vital of which are the emanation of the mark and the period of registration of that mark and its value.

Creation of a Grievances Committee chaired by an experienced judge and sitting, empowered with the jurisdiction of objections against the decisions issued by the Trademarks office.

Recognition of prior use rights, which may lead to cancellation of any trademark registered within 5 years in the event that it infringes on a prior user’s rights.

Shift in jurisdiction for cancellations of trademarks from the competent court to the Ministry of Economy.

Regulation of Geographical Indications which was not detailed in the previous law.

Custom seizures, where the customs authority is given the power to stop the clearance of shipments that violate this new law.

The increased fines for trademark infringement also stipulate penalties between AED100,000 and AED1,000,000 for various infringements.

All these changes are meant to increase the level of protection that a trademark enjoys within the United Arab Emirates and to bring the nation’s law in line with the international community concerning intellectual property issues.

Reasons Why Your Trademark Should Be Registered

Legal Protection

The UAE provides such crucial legal protection for the identity of a brand by dent of the process of registering the trademark; legal exclusivity over the name, logo, and anything distinctive that forms a brand ensues. It provides the owner of a registered trademark with wide protection and allows successful implementation and retort of any legal recourse of his rights in case of infringement.

Registration provides constructive notice of both ownership and use. In the event of an infringement or the utilization of some other similar logo or name that would bring confusion to possible consumers, the registered owner can have injunctive relief from the court. Such a legal presumption of ownership makes a huge difference in favor of the trademark holder in any controversy.

The protection period of a registered trademark in the UAE is for 10 years starting from the application filing date, which can be renewed for an equivalent period. If there is continued registration for a period of five years without any claims for ownership registered against the mark, the trademark will be considered as indisputable, and therefore, many challenges that might have been positioned against the mark will be eliminated.

For infringement, the trademark holder is allowed the following legal rights:

Application before the Magistrate of Summary Justice in the Civil Court for interim reliefs

Indemnity for the damage caused to him including loss of profit and damage caused to the brand image

judicial Expenses and all other out-of-pocket expenses paid by the infringement

Business Gains

There is a wide range of business benefits for Trademark registration in UAE which would for sure become a catalyst for improving the market positioning of a company and brand image.

Unique Identity: The trademark, once registered, will help to distinguish a company and protect its rights in the dynamic business environment of the UAE in a uniquely identifiable manner in such a competitive market.

Brand Perception: It helps in creating an enhanced look among customers, creating a perception of genuineness and clarity in the eyes of the customers. This increased valuation of the brand helps the firms to operate with proper smoothness and without legal hiccups.

The value of an asset: a registered trademark is an asset whose worth comes from selling, franchising, or even licensing. In addition to this, it is capable of collateralizing business-purpose loans and is helpful in several financing facilities.

Market Expansion: Trademarks facilitate expansion from one industry to another, and through them, a business can leverage its reputation built up in one market to expand into another.

Consumer Confidence: Trademark registration ensures that there is no use of the malpractices of passing off or use of any deceptively similar marks for customers.

Business Opportunities: Visibility will increase for a registered brand, opening up new opportunities for businesses and collaborations.

By filing for a trademark in the UAE, a business not only secures its intellectual property but also gets set for growth and success in this land of opportunity. Legal protection and commercial advantage are the two elements that make having a trademark registered very important for any business intending to build and grow its market presence.

Trademark Registration Eligibility

Who Can Apply

The UAE Federal Law No. 37 of 1992 on Trademarks explains who is eligible to register trademarks in the United Arab Emirates. The following are entitled or authorized to register marks:

The citizens of the UAE, whether natural or artificial persons, involved in any act of commerce, industry, profession, or service;

Any state of person that is foreign to the Arab countries, either natural or legal, involved in any act of commerce, industry, profession, or service;.

Foreign natural persons and entities who, in turn, practice any economic, professional, technological, or service activity in another country, based on reciprocity agreements.

Any other juridical persons.

Note that a trademark or an application for registration can’t be obtained by every employed person in the UAE. For foreign applicants, trademark registration must be done through a registered United Arab Emirate trademark agent. 

What Can Be Registered

The country of the UAE will allow for the following types of trademark applications: Words: Any word or set of words those are unique in their character to identify a product or service Symbols and logos: This may include any graphical or pictorial representation that uniquely identifies a service or product Colors: Colors, too, can be registered, but these colors have to be associated with a certain brand Three-dimensional shapes: A product shape or packing of goods that distinguishes it from another product Sounds: These may include any audio sounds, which are used as trademarks Holograms: Three-dimensional images formed with the interference of light. In addition to the above, the following are also registrable: Titles: The title that suggests any goods or services.

Brands: Distinctive and original names that define a brand

Marks: Elegant signatures employed to define a brand

Bills: Special graphical displays

Typography: Special letter combinations that identify a brand

Mascots: Cartoons and imaginary characters linked to a brand

Logos: Special seals crafted to define a given brand

Seals: Special seals that have been crafted to identify a brand

Illustrations: Paintings used to identify a brand

Brand tags: Special tags that determine a brand by name and identify one brand from another

The trademark should always be distinctive and the marks in UAE should not be similar. In addition, it shall not project any contravention of current laws and regulations. The trademark should also be classified in classes according to International Classification of Goods and Services, separate applications need to be made for each class of goods or services.

It is important to consider that some signs cannot be registered, including geographic nomenclature, banknotes, information concerning honorary degrees, and those signs contrary to public order or morals which might potentially mislead the public.

The Process of Registration: A Step-by-Step Guide

The entire process of trademark registration in the UAE undergoes some very vital steps, which include:

Trademark Search: This is necessary before filing an application for registration. It is to ensure that the proposed trademark is available for use and not in breach of registered or applied-for trademarks. It would cost AED 350 per class.

Preparing the Application: Following from the search, the application for registration of trademark shall be prepared. The application would entail the following:

 

Applicant details

A representation of the trademark in clear form

Specification of goods or services the trademark will represent

Filing the Application: The application form for registration with all other documents must be submitted to the UAE Ministry of Economy portal for trademark registration. The application fee is AED 750.

Examination: The application will be reviewed by the Ministry of Economy’s trademark office to check if it meets all requirements. This process might take about 30 days.

Publication: If all requirement is fulfilled, the application will get published in the official gazette of UAE and two local newspapers. This procedure has publication fee of AED 750.

Opposition period: After publication, there is 30 days during with any interested party can oppose the registration.’ If there no oppose the trademark proceeds further to finalized registration.

Registration and Certificate Issuance: This is the last step in the process, and a trademark registration certificate is issued if no oppositions have been forwarded. It costs a further AED 5,000 at the time of registration.

Outline of Timeline

The timeline for the trademark registration process in the UAE is approximately 4-6 months on well-taken applications granted no objections or oppositions are raised. The following timeline can be considered:

Application Filing and Examination: 30 days

Official Gazetting: Usually occurs after the examination has been done

Opposition Period: 30 days from the date of publication

Certificate of Registration: Within 30 days from the lapse of the opposition period

 

Late payment of the fees will attract the following surcharge:

Gazetting fee: AED 100, as long as the total imposed in any one year does not exceed AED 1,000.

Registration final publication fee: AED 1,000, as long as the imposed in any one year does not exceed AED 10,000

It typically takes 4-6 months from application to registration, provided there are no hitches. Applicants should be prepared for postponements and other documentary requirements, even if these are not filed.

How the Phase of Examination is Conducted

The Procedures of Examination

In Dubai and the UAE, examination is the most important process, although not final, in the trademark registration process. The trademark office affiliated with the Ministry of Economy is constantly involved in an extensive technical examination after an application is filed to make sure that all legal formalities are kept. It takes a period of up to 90 days and thus varies with the complexity of the application.

 

At this time, the following are examined:

  • Similarity to other marks that have already been registered
  • Distinctiveness of the mark

Laws and regulations compliance

After the filing that the application is in full compliance, it moves to publication. The trademark is published in the UAE’s official gazette as well as in two local newspapers. This acts as public notice to interested members of the public or parties.

The opposition period runs 30 days after publication. Any interested party may file opposition before the expiry of that time if they feel that the trademark has infringed on their rights. If no oppositions are filed within the given period, the trademark moves into the phase of registration and the applicant is granted a certificate of registration.

However, opposition to the registration is where things begin to get complicated. Here is the process:

Notice of objection— Within 30 days from the date of publication any interested party may file with the Ministry of Economy an objection to the application.

Notification to the applicant— A copy of the objection notice shall be forwarded by the competent department to the applicant within 15 days.

Applicant’s response: Response to the notice of the objection must be made within 30 days in writing. Failure to respond by the applicant shall be treated as a concession of the application.

Hearing: The department must schedule and inform each party of the hearing. An attendance fee is required for a hearing.

Decision: After the hearing, the department makes a reasoned decision and sends it to both parties.

the applicant shall have the right of appeal if the registration of the trademark is refused. Such an appeal may be filed before the Complaints Committee within 30 days from the date of notification of the decision. A legal action may be brought before the competent court for the annulment of the said decision within 30 days from the date of notification.

It is also very important to mention here that the opposition as a whole is normally finalized in the duration of 4-8 months. Applicants are highly encouraged to take support of UAE trademark agents in a bid to seek consultation during this complex process.

 

Publication and Opposition Procedures

Public Notification

Provided that the application for a trademark is accepted by the Ministry of Economy to be registered, it is then published on. During this step, the trademark shall be published in an electronic bulletin printed and issued by the Ministry within 30 days after the notification of its acceptance. The purpose of publishing it is to announce to the public in order that any party interested could oppose the mark in time. The publication fee to be paid by the applicant governing

Publication in the Ministry’s electronic bulletin

Announcements in two local newspapers

This public notification process ensures transparency and allows potential clashes with registered trademarks to be identified.

 

Adresssing Oppositions

After the publication, a 30-day period to settle the oppositions will begin. During this period, any interested party may lodge an opposition to the registration of the trademark. The opposition process looks like this:

Filing of opposition: Any interested person may file a reasoned opposition within 30 days from the date of the publication of the mark before the Ministry of Economy. This term is without suspension.

Notification of the notification of opposition to the applicant: The Ministry forwards the notification of the grounded opposition to the applicant within 15 days from the filing of this opposition.

Response of the applicant: The applicant shall, within 30 days, respond to the objection in writing. If the applicant does not respond within thirty days, the application will be considered to have been abandoned.

Hearing: If the competent department deems it that there is a need for a hearing, a date shall be fixed so that the parties can bring in their evidence and submissions. Attention at the hearing is upon the payment of the fixed fees.

Decision: After listening to the submission of cases, a reasoned decision is taken by the Ministry and is communicated to both the parties. The decision may refer to the acceptance or rejection of the application, impositions of restrictions or conditions that it may consider necessary.

The opposition grounds may be relative, such as an opposition based on prior conflicting rights in a trademark. Any opponent may rely on a registered or an unregistered trade mark so long as he can establish his legitimate interest and the prior adoption or use of the mark in the UAE or any other country.

The whole process of opposition takes on average 4-8 months to complete the whole process. Within 30 days of the notification, any of the parties, if not happy with the verdict, can file an appeal before the Grievance Committee. To the Federal Court of Appeal, further appeals can be made within 30 days from the decision of the Grievance Committee.

For this process, brand owners should be aware that the time limits involved are very strict and, if necessary, the presence of legal counsel is a must. Opposing parties to register have to file Power of Attorney documents properly notarized and legalized, in case the party has a place of residence outside the UAE.

 

How to Protect Your Trademark After Registration

Keeping Your Trademark End ™ ➔ ❑

It is equally important to maintain the protection and validity of the trademark after successfully registering it in Dubai, UAE. In general, trademark registration is valid for a period of 10 years, renewable on expiry. After successfully protecting against danger and challenges to the validity of a trademark, the following are some of the steps that would ensure it remains on a safe course of continuation:

Monitor renewal dates: Early start of the renewal process at least six months before it is due allows one ample time to finish the process.

Conduct a status check on the trademark: Before making a step to file for renewal, ensure that there are no outstanding matters against the trademark, such as opposition and/or cancellation, which may adversely affect the renewal. It is of the essence to renew the trademark if necessary: changes necessary to reflect changes in the business or in the nature of the industry. Any such changes ought to have been effected before commencing the renewal process.

Renewal Fee Planning: Renewal fees must be known along with making provisions related to the same during the registration period. Currently, the UAE has put up a renewal fee of AED 5,750.

Contact Information Must Be Updated: All contact information must be kept up to date with the trademark office to ensure the receipt of all renewal notices.

Respond in time to avoid the cancelation of registration in case an office action is issued during the renewal process by the trademark office.

Keep documents as evidence in renewal of registration; this will be very useful for use upon the occurrence of a dispute between the parties.

The renewal is effected by completing a renewal application form on the Ministry of Economy website, paying the prescribed fees, and publishing a cautionary notice in two of the local Arabic dailies for a day. Thereafter, the submission of a copy of the local publication, with the online application in a scanned copy, the renewal certificate is provided, and a trademark publication is issued in the trademarks bulletin.

 

Enforcement Strategies

To preserve the value of and protect a registered trademark from all forms of infringement, enforcement measures by the brand owner are essential. These would include:

 

Customs Recordal: Register the trademark with UAE Customs to allow for border protection measures that involve the customs authorities applying an ex officio border system that allows detention of suspected shipments.

Provide details of the products and supply them to the custom officials in a product information guide to help identify genuine from counterfeit.

 

Organize Training Workshops: Organize and conduct training sessions specifically for the officials at the Customs to understand counterfeit goods better and also to learn the associated problems specific to the type of products.

 

Maintain Open Communication: After developing a good rapport with the Customs, quick responses are necessary if any communications are received regarding the detention of goods.

 

Monitor the Market: There should be a trademark watch service maintained to continuously monitor the trademark databases for any infringements.

Issue Cease and Desist Letters: In case of infringement noticed, send out well-crafted Cease and Desist letters as the first step of protection.

 

Initiate the Preparation of Legal Action: In case of a willful infringement scenario, be prepared to file a suit by gathering necessary evidence and researching materials related to the case.

 

Collaborate with customs: Engage in regular dialogue with customs to ease the process of fighting counterfeits all the way.

 

The post-registration strategies will help protect the intellectual property rights of the trademark owners and hold their brand value in the United Arab Emirates market.

Trademark registration in Dubai, UAE, has been very important to help protect intellectual property and facilitate growth in business. It takes the full process, running from a search to the examination phase, and, if necessary, a possible opposition. Following the laid-down procedures and reflecting on the set-out eligibility criteria, a business can protect its identity in the UAE market.

 

Nonetheless, vigilance on a registered trademark sustains in the mind of the consuming public. Regular renewal, monitoring of markets, and strategies of proactively enforcing the said registrations are relevant for value preservation and avoiding possible infringement of a trademark. Companies find that the UAE offers a solid legal framework and growing business landscape, making it very conducive to not just establish but also secure a brand presence through trademarks.

 

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