First registered designs published

United Arab Emirates

Registered designs filed in the United Arab Emirates (UAE) have been published for the first time in the latest edition of the Official Journal issued by the UAE Trademarks Office. These designs were filed in 1998.

While it has been possible to file registered designs in the UAE since the mid-1990s, applications were not being examined or reviewed by the officials. However, following the transfer of responsibility for registered designs to the Trademarks Office at the Ministry of Economy in early 2007, the officials have taken steps to process the backlogs of registered designs. This culminated in the first acceptance notices being issued in the latter part of 2007, and the first batch of publications in March this year.

This is a significant development for rights holders, as they will be able to obtain protected registered designs in the UAE. There is a significant backlog of filings to clear, but this should be done reasonably quickly as the office does not seem to be carrying out substantive examination. It appears that the office has taken the decision not to process applications filed prior to 1998 on the basis that the protection period has lapsed.

The publication of registered designs will have other consequences. Brand owners seeking to clear trademarks in the UAE - in particular marks which potentially cross over with registered designs, such as three-dimensional trademarks - will need to consider carrying out searches of registered designs alongside trademark searches. With an increasing number of three-dimensional trademarks being filed and accepted in the UAE, this new development increases the importance of developing a UAE search strategy.

The impending protection of registered designs in the UAE may also provide rights holders with the opportunity to record their registered designs with customs authorities in the emirates of Dubai and Sharjah, which have introduced Customs recordals for registered trademarks in the past 18 months (for further details please see "Customs trademark recordation service introduced" and "Sharjah Customs launches trademark recordal system". Design holders are advised to lobby for the current customs recordal procedures to be extended to protected designs.

Jon Parker, Rouse & Co International, Dubai

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