Trademarks in UAE: Legal overview and jurisprudence

Apple, McDonalds, Amazon, Google and Nike are among a dozen other brands that are simply recognized by their names or logos.

These companies live up to their brand names. That is exactly what a “trademark” is. It creates a unique branding for a product/service that differentiates it from another in the market and identifies it with different characteristics. Trademarks have become important assets for international businesses as well as local ones. Their value represents a large percentage in the overall evaluation of the whole business. Hence, trademark owners always strive to protect these marks from infringement or illegal use by others.

In the below Q&A, I will try to highlight the basic information relating to the definition, registration, use and protection of trademarks in the United Arab Emirates while also outlining the UAE Courts’ jurisprudence on ownership of a trademark.

Legal Overview

    Q1. What is the regulatory framework for trademarks in the UAE?

A legal/regulatory framework is the set of laws, resolutions and rules that govern or apply to a certain matter. These regulations or legislations are either issued by each country as part of its national legislation or agreed upon internationally through bilateral or multilateral agreements. When it comes to the legal framework for trademarks in the United Arab Emirates, there are national legislations enforced and applied in the State and regional and/or international Agreements that the UAE has ratified or is part of.

First: National Legislation

Federal Law No. (37) of 1992[1] (“Trademark Law”) is the law that regulates trademarks in the UAE. This law was issued on 28 September 1992 and came into force on 13 January 1993. In addition to this law, there are other resolutions issued by the UAE authorities that complement the principles and provisions set out in the original law. They are:

1. Cabinet Resolution No. 18 of 1993[2], concerning the fees of procedures in accordance with the provisions of the Trademark Law; and
2. Minister of Economy and Commerce Resolution No. 6 of 1993[3], issuing the executive regulations of the Trademark Law. An annex was attached to the resolution identifying classes for trademark registration. The initial annex contained 42 classes before it was amended[4] to 45 classes (replicating the Nice Classification).

These two titles are the key in governing trademarks in the UAE but there may be other Ministerial Resolutions issued, to further explain or clarify certain procedures [5] relating to the registration of trademarks. Having said that, it’s worth mentioning that the UAE, being a Union, does not have local legislation relating to trademarks issued by each Emirate separately.

Second: Regional and International Agreements

In reference to International Agreements, there are three main Agreements that are important to notice when it comes to trademark registration and/or protection. These agreements are:

1. The World Intellectual Property Organization (WIPO)[6].
2. The Paris Convention for the protection of Industrial Property[7].
3.  The Trade Related Aspects of Intellectual Property Rights (TRIPS)[8].

The UAE has signed several bilateral agreements with other countries for the protection of intellectual property rights (including trademarks). These countries are:

1. Jordan[9].
2. Lebanon[10].
3. Morocco[11].
4. Iraq[12].
5. Sudan[13].
6. EFTA States[14].

On a regional front, it’s worth noting that the Gulf Cooperating Council (GCC) has issued a trademarks law in 2012 (“GCC Trademark Law”). Although the Law aims to be a unifying one for all member states of the Gulf Cooperating Council, it’s not a unitary one. In other words, this means:

1. The law will be effective only when approved by a member state.
2. There are no provisions that will create a uniform process for all countries at the same time. For instance, the registration of a trademark in a member state is not automatically considered as such in all other member states.  A registration application will still be required in every member state for the registration of this trademark.

Despite all that, the provisions of the GCC Trademark Law are not applicable in the UAE because, at present, the UAE is the only country of all six who has not yet ratified it. All other members[15] states have.

    Q2. Who are the related authority bodies?

In the UAE, the three main concerned government bodies are:

1. The Ministry of Economy.
2. The Trademark Registry Office (TRO) at the Ministry of Economy.
3. The International Property Rights (IPR) Department.

    Q3. What may be considered a 'trademark'? 

A trademark is a type of intellectual property consisting of recognizable traits or characteristics (sign, color, word, logo, etc.) that identify a certain product or service and differentiate it from other similar products or services in the market. In other words, a trademark acts as an identifier of the commercial origin of a certain product or service.

Article (2) of the UAE Trademark Law identifies what may be considered a ‘trademark’: «Names, worlds, signatures, letters, numbers, drawings, symbols, addresses, hallmarks, stamps, pictures, vignettes, notices, packages or any other mark or combination of marks having a distinctive form and used or meant to be used - in distinguishing goods or products of whatever origin, or in showing that the goods or products are owned by the owner of the trade mark because he or she manufactured it or selected it or traded in it, or rendered a service under it.

A sound shall be considered part of the trade mark if it was accompanying it. »

    Q4. What is the 'Class System'?

A 'class system' is a group of categories each containing a set of terms and standards to better define the goods or services that fall within. It’s a categorization of these goods and products according to which a trademark (associated with a certain business activity) is registered. Classes are also used to check whether similar or resembling trademarks can be registered (if they fall within different classes) or the Trademark Office should reject the application on the basis of similarity (especially if both trademarks fall within the same class).

There are 45 international classes used by different countries around the world for trademarks registration. These classes were initially introduced by the Nice Agreement (1957)[16]. Worldwide, 136 countries have ratified this agreement and started implementing the Nice Classification in their own countries. However, the UAE has not yet ratified it even though the concerned authorities have used the Nice Classification as a benchmark for the registration of trademarks in the State. The UAE has 45 classes for trademark registration (34 for goods or products and 11 for services).

    Q5. What is the duration and scope of protection for a registered trademark?

Any trademark registered in the UAE will enjoy a protection of 10 years[17] against infringement. This protection begins from the date of filing the application for registration and can be renewed for a similar period.

    Q6. What is the scope of this protection?

The protection is only applicable inside the UAE and limited to the class the trademark is registered under. The protection does not extend to include other classes or other jurisdictions.

Furthermore, article (17)[18] of the UAE Trademark Law clearly states that a person who registers a trademark is considered the exclusive owner of it. This ownership cannot be disputed if the registered trademark has been used by its owner for 5 consecutive years. However, any person wishing to revoke the registration of a registered trademark has to prove that

    i. the trademark has been wrongly registered; or

    ii. the registered owner of the trademark has not used it for five consecutive years since its registration[19].

Alternatively, a user of a trademark can seek the cancellation of an application to register a trademark on the basis of 'well-known marks'. Having said that, the real predicament is in practice and not in theory. What happens when a person files an application to register a trademark that is already in use by another but not registered?

The UAE Trademark Law is silent in relation to the protection of 'prior use'. It clearly follows a strict rule for the protection of trademarks and that is 'registration'.

Jurisprudence

    Q7. What is the UAE Courts’ stance on 'prior use'?

There’s no dispute that the protection of a trademark, in accordance with the UAE Trademark Law, is clearly based upon the registration of the trademark. In other words, the Law does not provide a clear provision that protects the rights of an “unregistered trademark” that has been used by another person or allow such user to base his opposition against the registration of a trademark on the notion of “prior use”. This is where the problem lies.

If courts were to follow the provisions of the UAE Trademark Law, the majority of the cases or appeals filed to stop an application or revoke the registration of a trademark, on the basis of “prior use”, would be rejected. As mentioned earlier, the Law does not contain a clear provision that protects the rights of a prior user of a certain trademark.

I have made an attempt to review, as much possible, Court of Cassation judgments (Dubai, Supreme Court and Abu Dhabi) to clearly identify the UAE Courts jurisprudence in relation to the ownership of trademark. In a considerable number of cases, the UAE Courts have followed a more lenient approach towards the “prior use” principle. It can be clearly seen that the Courts allowed a prior user of a trademark to defend his rights of ownership, against the registration of the same, provided that he can prove his or her ongoing use of the trademark prior to filing the application for registration from another person.

In summary, the UAE Courts have asserted three main principles on which it relies to decide on the disputed ownership of a trademark. They are: 

1. Ownership of a trademark is decided based on prior use:

The registration of a trademark is considered a presumption of prior use since the registration does not establish the right. However, this does not prohibit any person claiming otherwise to prove his or her use of the trademark prior to its registration. Therefore, claimants who were able to prove their prior use of the trademark won the awards. This principle has been consistent in judgments of Union Supreme Court[20] and Dubai Court of Cassation[21] (including recent ones, in 2019). 

2. “Prior Use” shall prevail in the event it is in the UAE and not in a foreign country:

The registration of a trademark in another country will not be considered as proof of “prior use”. For the Courts to rule on the ownership dispute, “prior use” should be in the United Arab Emirates and not in a foreign country[22].

3. A registered mark used for five consecutive years cannot be disputed:

In application of the provisions of article (17) of the UAE Trademark Law, the UAE Courts have protected the right of ownership of the person who registers a trademark and uses it for five consecutive years without being disputed. In other words, the ownership of a trademark cannot be disputed or claimed – by law – if it were correctly registered and used by its owner for five consecutive years[23]. This means, any person claiming to own a trademark based on use prior to its registration, will need to file his appeal before the lapse of five years (starting from the date of registration)

Conclusion 

In the absence of clear and direct provisions concerning the protection of users of unregistered trademarks, large businesses (as well as newly established ones) who have built a reputation and a strong trademark one, should not neglect the importance of registering it. When combined with consistent and steady use, registration can grant the owner of a trademark ultimate protection, especially with the recent reduction in administrative fees for the registration of trademarks, a step the UAE government had taken to further empower businesses operating in the UAE.

The ongoing silence of the UAE Trademark Law on the regulation of prior use, will keep creating ambiguity concerning the protection of trademarks. Therefore, an amendment to the current legislation, will be highly appreciated in the legal market, in order to consolidate the jurisprudence of the UAE Courts and provide more clarity to the existing provisions all while adopting an advanced approach similar to that in other countries and international IP conventions.

Author: Nadim Al Jisr, Head of Legal Content, Thomson Reuters MENA

References

[1] Since its enforcement in January 1993, this law has been amended twice: (1) Federal Law No. 19 of 2000; and (2) Federal Law No. 8 of 2002.

[2] Issued on 19 December 1993. Published in Federal Gazette, issue no. 260, dated 30 December 1993.

[3] Issued on 02 February 1993. Published in Federal Gazette, issue no. 248, dated 28 February 1993.

[4] Minister of Economy and Commerce Resolution No. (165) of 2001 amended the annex attached to the executive regulations and divided Class 42 into 4 different classes raising to total number of classes to 45.

[5] Minister of Economy and Commerce Resolution No. 67 of 1998, concerning the collection of trademark registration fee; and Resolution No. 106 of 1999, concerning the refund of trademark registration fee; and Resolution No. 67 of 2001, concerning the collection of trademark publication fees.

[6] The UAE’s accession to the Organization was ratified by Federal Decree No. 21 of 1975.

[7] The UAE’s accession to the Paris Convention was ratified by Federal Decree No. 20 of 1996.

[8] The UAE’s accession to TRIPS was ratified by Federal Decree No. 21 of 1997.

[9] Agreement on economic, commercial and technical cooperation and the establishment of a free trade zone between the UAE and the Hashemite Kingdom of Jordan, ratified by Federal Decree No. 35 of 2001.

[10] Agreement on economic, commercial and technical cooperation and the establishment of a free trade zone between the UAE and the Lebanese Republic, ratified by Federal Decree No. 7 of 2002.

[11] Agreement to establish a free trade zone between the UAE and the Moroccan Republic, ratified by Federal Decree No. 8 of 2002.

[12] Agreement to establish a free trade zone between the UAE and the Republic of Iraq, ratified by Federal Decree No. 18 of 2002.

[13] Agreement to establish a free trade zone between the UAE and the Republic of Sudan, ratified by Federal Decree No. 36 of 2003.

[14] Free Trade Agreement between EFTA States and member States of the GCC, ratified by Federal Decree No. 12 of 2014.

[15] Bahrain was the first country to ratify the GCC Trademark Law (Law No. 6 of 2014, dated 17 February 2014) followed by Saudi Arabia (Royal Decree No. M51 of 1435H, dated 25 May 2014), then Qatar (Law no.7 of 2014, dated 08 June 2014), then Kuwait (Law No. 13 of 2015, dated 11 March 2015) and finally Oman (Royal Decree No. 33 of 2017, dated 25 July 2017).

[16] The Agreement was originally signed in 1957 (revised in 1967 and 1977) and amended in 1979. The latest edition released of the Nice Classification (NCL) is the 11^th edition, that came into force on January 1^st, 2019.

[17] Article (19) of the UAE Trademark Law.

[18] Article (17): “The person who has a mark registered shall be considered its exclusive owner. Ownership of the mark may not be disputed if such mark has been used by its registered owner continuously for at least five years after the date of its registration without a case relating to its validity has been raised against him.

The owner of the registered mark shall enjoy the right of preventing third parties to use an identical or similar mark to distinguish identical or similar products or services or products or services related to the products and services of which the mark is registered, in a way that may lead to cause confusion to the consumers.”

[19] Articles (21, 22) of the UAE Trademark Law.

[20] Union Supreme Court Civil Appeal No. 13 of JY19 (dated 27 February 1999); Union Supreme Court Civil Appeal No. 195 of JY21 (dated 11 February 2001); Union Supreme Court Civil Appeal No. 528 of JY21 (dated 02 May 2001); Union Supreme Court Civil Appeal No. 16 of 2009 (dated 15 March 2010).

[21] Dubai Court of Cassation Civil Appeal No. 258 of 2002 (dated 06 October 2002); Dubai Court of Cassation Civil Appeal No. 260 of 2003 (dated 02 November 2003); Dubai Court of Cassation Civil Appeal No. 598 of 2003 (dated 12 June 2004); Dubai Court of Cassation Commercial Appeal No. 124 of 2015 (dated 24 April 2016); Dubai Court of Cassation Commercial Appeal No. 826 of 2016 (dated 07 May 2017); Dubai Court of Cassation Commercial Appeal No. 753 of 2016 (dated 29 October 2017); Dubai Court of Cassation Commercial Appeal No. 397 of 2019 (dated 09 July 2019).

[22] Dubai Court of Cassation Civil Appeal No. 394 of 1997 (dated 19 April 1998); Dubai Court of Cassation Civil Appeal No. 86 of 1999 (dated 28 May 2000); Dubai Court of Cassation Commercial Appeal No. 200 of 2008 (dated 23 December 2008).

[23]  Dubai Court of Cassation Civil Appeal No. 16 of 1995 (dated 25 June 1995); Dubai Court of Cassation Civil Appeal No. 86 of 1999 (dated 28 May 2000); Dubai Court of Cassation Commercial Appeal No. 268 of 2008 (dated 09 June 2009); Dubai Court of Cassation Commercial Appeal No. 124 of 2015 (dated 24 April 2016); Dubai Court of Cassation Commercial Appeal No. 397 of 2019 (dated 09 July 2019).