Federal law amended to implement TRIPs obligations
The UAE Federal Trademark Law 37/1992 has been amended by Law 8/2002. The following are the most significant new provisions:
- Article 3 prohibits the registration of marks incorporating national or foreign emblems or currency. Previously, only marks which lacked distinctive character and those which incorporated government insignia, or the symbols of the Red Crescent or the Red Cross were unable to be registered.
- Article 4 provides that trademarks that are well known outside their home jurisdiction may be registered only by the original owner, or with the original owner's authorization.
- Article 8 confirms that the United Arab Emirates will follow the Nice Agreement concerning the International Classification of Goods and Services for Purposes of the Registration of Marks. Therefore, one trademark may be registered in a number of classes, but each class must be filed under a separate application.
- Article 10 requires that before a new mark is registered, the Ministry of Economy and Commerce must check to ensure that if an identical or similar trademark has already been registered, the new mark's use would not indicate a connection in trade or damage the interests of the existing trademark's owner. Further, if an identical or similar trademark has been filed for the same or similar products or services within the same class, the ministry will suspend all applications pending settlement between the parties or a court judgment.
- Article 14 provides that once approved by the ministry, a trademark application must be published in the Trademark Bulletin and two daily Arabic newspapers circulated in the United Arab Emirates, at the applicant's expense. After the final publication, interested third parties have 30 days in which to file an opposition to the registration, either by hand, registered post or email.
- Article 17 entitles the owner of a registered trademark to prevent others from using an identical or similar mark for similar, identical or related products and services in such a way as to cause confusion among consumers.
- Article 20 empowers the Ministry of Economy and Commerce to cancel a wrongful trademark registration without reverting to the courts. However, the parties concerned must be notified and they are given the right to appeal within 30 days of such notification.
- Article 22 provides that any interested party may file with the competent civil court an application to cancel a registration which has not been in use for five years, except where external obstacles exist (eg, import restrictions).
- Article 32 prohibits compulsory licensing.
Overall, Law 8/2002 goes a long way towards extending the protection afforded to trademark owners, and specifically owners of well-known trademarks. It also introduces several provisions to bring the Federal Trademark Law into line with the United Arab Emirates' obligations under the Agreement on Trade-Related Aspects of Intellectual Property Rights.
Hoda Barakat, Al Tamimi & Company, Dubai
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