In Brief:
- At the end of 2021 and beginning of 2022, the UAE introduced a new trade mark law and joined the Madrid Protocol.
- These are only some of the widespread changes to the intellectual property framework in the UAE which have taken place over the past few months. These include new data protection, copyright and patent/design laws.
- Brand owners will now be able to benefit from increasingly more cost-effective and easier means to protect, commercialise and enforce their trade mark rights in the UAE.
Overview
On Saturday 27 November 2021, the largest legislative reform in the history of the UAE was announced.
Over forty laws, covering a range of areas, were included in these changes, and comprised either amendments to existing laws or the introduction of new laws. Announced in the ‘Year of the 50th’ following the formation of the UAE in 1971, the reforms aim to strengthen economic, investment and commercial opportunities in the UAE and also enhance the rights of individuals and entities in the UAE.
From an intellectual property perspective, the reforms included:
- A new trade mark law (Federal Law No. 36 of 2021 on Trademarks)
- A new copyright law (Federal Law No. 38 of 2021 on Copyrights and Neighbouring Rights)
These follow other significant legislative developments over the course of 2021, including:
- A new Federal data protection law (Federal Law No. 45 of 2021 on the Protection of Personal Data Protection) which came into effect on 2 January 2022
- A new patent, utility model and design law (Federal Law No. 11 of 2021 on Regulation and Protection of Industrial Property Rights) which came into force on 30 November 2021.
This summary note will focus on the new trade mark law.
New Trade Mark Law
Federal Law No. 36 of 2021 on Trademarks (the New TM Law) came into effect on 2 January 2022 and replaces the previous trade mark law (Federal Law No. 37 of 1992).
While the Executive Regulations, which will provide further details on the implementation of the New TM Law, have not yet been issued, the New TM Law introduces a number of key changes which further enhances trade mark practice in the UAE
Some of the key changes of most interest to brand owners include:
Multi-class applications |
|
Non-conventional trade marks |
|
Clarification of a ‘well-known’ or ‘famous’ trade mark’
|
|
Appointment of a Grievance Committee |
|
Cancellation actions before the Ministry |
|
Recordal of trade mark licences |
|
These are only some of the changes introduced under the New TM Law and we will circulate a more detailed analysis once the Executive Regulations are issued. In the meantime, it is clear that these changes are intended to further streamline the trade mark framework in the UAE.
Accession of the UAE to the Madrid Protocol
Another significant trade mark development in 2021 saw the UAE become the 109th member of the Madrid System when it joined the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the Madrid Protocol). This entered into force in the UAE on 28 December 2021.
The Madrid Protocol and the Madrid Agreement (both forming the Madrid System) enable brand owners in one member country to protect their trade marks in any of the other 108 member countries by filing a single international application through their national trade mark office and via the World Intellectual Property Organisation (WIPO) in Switzerland.
In practice, this means that local brand owners in the United Arab Emirates will be able use the Madrid Protocol to protect their trade marks in other Madrid members by filing a single international application and paying a single set of fees. Equally, countries that are members of the Madrid Protocol will be able to file international applications that designate the UAE. The mechanism for the operation of Madrid Protocol filings in the UAE is expected to be announced shortly.
However, not all countries are members of the Madrid System. For example, and on a regional level, the Gulf Cooperation Council (GCC) comprises the UAE, Bahrain, Kuwait, Oman, Qatar and Saudi Arabia. Of these six GCC countries, only the UAE, Bahrain and Oman are Madrid members. National filings are therefore required in Saudi Arabia, Kuwait and Qatar.
Additionally, there may be instances where it is more cost effective, strategically important, or both, to file a national application directly in the UAE rather than via the Madrid Protocol.
Lastly, even where a trade mark filing program uses the Madrid Protocol, there will still be a need to appoint a local representative in a particular country in the event that an objection during examination, or opposition during publication, arises in that country.
Careful consideration of the various factors should be taken into account when structuring a trade mark filing program and determining whether national filings, Madrid applications, or a combination of both, is the most appropriate mechanism to roll out protection of a trade mark.
Conclusion
The latter half of 2021 and early 2022 has seen very significant changes in trade mark practice in the UAE. With the benefit of the soon to be announced Executive Regulations, the changes implemented by the New TM Law will provide brand owners with a broader range of mechanisms for the protection, commercialisation and enforcement of their trade mark rights.
In parallel, the accession of the UAE to the Madrid Protocol provides a further means by which brand owners, both within the UAE and internationally, have access to securing trade mark registrations outside their home countries.
We will provide a further update when the Executive Regulations for the New TM Law are issued and guidance for the Madrid Protocol is handed down.
In the meantime, if you would like more information, or have any questions, please contact James Dunne on j.dunne@hadefpartners.com, Rami Omar on r.omar@hadefpartners.com, or your usual Hadef & Partners contact.