TRADEMARKS FILING AND PROSECUTION IN UNITED ARAB EMIRATES
A trademark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to help consumers indentify that its products or services with which the trademark appears originate from a unique source, and to help distinguish its products or services from those of other entities.
Trademark in UAE may be designated by the following symbols:
- ® (for a registered trademark)
- ™ (for an unregistered trademark)
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standards categories, such as those based on colour, smell, or sound.
A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services.
The owner of the registered trademark may initiate legal proceedings for trademark infringement to prevent unauthorized use of that trademark. [1]
The Federal Law No (37) of 1992 concerning trademarks defines the trademark and provides the pre-requisites and conditions for the registration of the trademark. It also maintains the register at the ministry where it recorded all the trademarks, name, address, details of the owner, description of the goods and/or services etc. [2]
The ministerial resolution no (6) of 1993 on the executive regulations of federal law no (37) of 1992 concerning trademarks, the commercial control department at the ministry is mandate with implementing trademarks law in addition to the collection of prescribed fees. It also stipulates the additions or alterations needed in the trademark.[3]
| Relevant office | Trademark & Intellectual works department Ministry of Economy |
| Nice classification | Yes (10th edition) |
| Paris convention | Yes |
| Madrid system | Yes |
| Multi class system | No |
| Document required for filing a trade mark application | Legalised Power of Attorney, copy of the commercial license, trademark logo |
| Prosecution process | Filing publication of the mark in the trade mark journal opposition(within 30 days from the date of Publication) registration renewal |
| Registration term | 10 years from the date of filing date |
| Renewal term | 10 years |
Trademark searches in United Arab Emirates
It is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, existence of prior identical/similar marks on the register etc., so as to avoid any objection and opposition with respect to the mark.
A trademark search in UAE can be conducted for word marks, device marks, numeral and labels. An official search can be conducted through trademark agents at the records of the UAE, IP office and the official search result for the concerned mark can be obtained within 1-2 working days.[4]
Trademark word search edition of UAE follows the Nice Classification and trademark applications can be filed for goods in classes 1-34 and services in classes 35-45.
It is advisable to conduct comprehensive trademark clearance search in UAE to ascertain availability of the proposed mark and also to overcome any objection and opposition with respect to mark later on.
Along with trademark search, it is also advisable to do a comprehensive company search and domain search of the proposed trademark in UAE. It is advisable to conduct a comprehensive search for a figuration trademark. The device marks include individual marks such as stylized letters, numerals, shapes, plants, celestial bodies, living creatures etc. or combination of marks containing device marks. A device mark search in UAE can be conducted amongst the marks filed and registered as per the Vienna code classification.
Filing trademark application in United Arab Emirates
A person may file single class trademark application in UAE.
Trademark application can be filed in the following categories:
- Ordinary Applications
- Convention application (claiming priority from a convention country)
Ordinary applications in United Arab Emirates
Ordinary trademark applications filed in UAE are applications without claiming any priority. Ministry of Economy of the United Arab Emirates provides an option to submit an online application. Ministry on its official website provides with a service register trademark which enables the registration of a new trademark and whereby the said application is reviewed and examined so that it is not identical or similar to previously registered trademarks. Multi class trademark applications cannot be filed in UAE. However, the trademarks act also lays down provisions regarding the filing of priority applications, wherein priority of the mark can be claimed in the said mark filed in a convention country.[5]
Priority trademark applications in UAE/Convention trademark applications UAE:
A priority trademark application may be filed in UAE. A priority trademark application should be filed in Bahrain within 6 months after the date on which the application was made in the convention country.[6]
Paris convention
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, established a Union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in UAE within six months of after the date on which the application was made in the Convention Countries.
Trademark classes for goods and services
UAE follows the nice classification of classes. UAE uses the nice classification of classes that groups together similar goods or services into 45 different classes. Classes 1 to 34 are assigned for the goods and classes 35 to 45 are assigned for the services. Each class contains well defines list of terms and cover all the goods and services.
Trademark examination in United Arab Emirates
Once the application is submitted with the Ministry of Economy it goes through the examination process. The application is examined to make sure that the application for the registration has met all the legal requirements for the registration and it can be refused on the absolute grounds. The examination period is of 30 days from the date of submitting the application. [7]
Trademark opposition in United Arab Emirates
If the trademark application for the registration has successfully completed the examination period, the trademark application is accepted and is published in the official gazette for the third party observation. Third party can oppose the trademark application for the registration within 30 days from the date of issuing the marks bulletin. After the expiration of opposition period if the mark if the decision is in favor of the applicant or if no opposition has filed as the case may be, the certificate for registration is issued after the payment of the official registration fee.[8]
Trademark registration in United Arab Emirates
The application shall proceed to registration where there is no opposition or where the opposition was filed and was decided in favor of the applicant. The mark is registered for a period of 10 years from date of filing of the application and the registration certificate is issued.
[1] https://ssrana.in/global-ip/international-trademark-filing-registration/trademarks-in-united-states/
[2] https://www.moec.gov.ae/en/federal-law-no-37-of-1992-concerning-trademarks
[4] https://njq-ip.com/newsletters/2004/12/qatar-improvement-of-prosecution-at-the-qatar-trademark-office-qtmo/
[5] https://services.economy.ae/m/Pages/ServiceCard.aspx?WFID=37
[6] https://www.wipo.int/treaties/en/ip/paris/summary_paris.html
[7] https://services.economy.ae/m/Pages/ServiceCard.aspx?WFID=37
[8] https://services.economy.ae/m/Pages/ServiceCard.aspx?WFID=37