United Arab Emirates

How INTA is helping to shape the trademark environment in Africa and the Middle East

This week, INTA is hosting its 2018 Middle East and Africa Conference. As the event kicked off, we spoke with an INTA representative to look at recent developments and why an annual meeting in the region is “a natural step”. Read more

New EUIPO report charts increasing sophistication and diversification of counterfeiters

The EUIPO has released a new report, compiling research since 2013, to present a comprehensive and updated picture of the scope and impact of IP rights infringement in the European Union.

Procedures and strategies for anti-counterfeiting: United Arab Emirates

For many years, the United Arab Emirates has had one of the most active anti-counterfeiting regimes in the Middle East and Africa. Read more

US government ranks Canada’s border enforcement on same level as China; Special 301 adds Saudi Arabia and UAE

The USTR has published the 2018 Special 301 Report, and Canada has been added to the Priority Watch List due to “a failure to resolve key longstanding deficiencies in protection and enforcement of IP”.

Despite the potential of the Middle East, excessive fees are leading to a shrinking trademark market: exclusive data analysis

In this week’s data report, we examine the state of the trademark market in the Middle East, taking an in-depth look at filing trends in Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the UAE in particular. Read more

New Commercial Companies Law: impact on trademark owners

The new Commercial Companies Law has two major consequences for trademark owners in the United Arab Emirates. First, the new law allows brand owners to set up holding companies to own all their IP rights, and such companies can be established onshore. Second, the law introduces an administrative mechanism whereby brand owners can seek the cancellation of identical or confusingly similar trade names.

GCC Trademarks Act resolves uncertainty over use of marks by licensees

The Gulf Cooperation Council Trademarks Act will provide an adequate solution to one of the most controversial issues that has arisen under the trademark regime of the United Arab Emirates. Article 32 of the act clearly provides licensors with the right to rely on unrecorded licence use to prove genuine use of the marks.

EIPA conference discusses IP successes and challenges in the United Arab Emirates

The recent Regional Intellectual Property Crime Conference discussed IP rights issues that must be faced by UAE authorities and focused on the importance of regional and international cooperation in the fight against counterfeiting.

Litigation procedures and strategies: United Arab Emirates

With the exception of the Dubai International Financial Centre free zone in Dubai, the legal framework in the United Arab Emirates is very much a civil law system, which affects the way in which trademark owners seek to enforce their rights against third parties and cases are pled and progress through the courts. Read more

Dubai DED launches IP Gateway

The Dubai Department of Economic Development has recently implemented an online system for registering IP complaints. This new online system allows brand owners and lawyers to pursue their complaints electronically.

Protection of a well-known trademark

An important judgment was recently issued in the United Arab Emirates relating to a well-known trademark. The judgment effectively excludes well-known trademarks from the time bar cancellation, which currently stands at five years.

Abu Dhabi Customs launches recordal system

As Abu Dhabi Customs launches a formal trademark registration recordal system, it becomes the fifth of the seven emirates in the United Arab Emirates to adopt a customs recordal system for trademarks.

Amended law on Federal Customs Authority issued

The President of the United Arab Emirates has issued Federal Law No 8 of 2015 concerning the Federal Customs Authority, which will come into force six months after its publication. The amended law aims to improve competitiveness in the customs sector by boosting performance and system efficiency, and to unify customs procedures.

Abu Dhabi government issues new regulation on trade names

The Abu Dhabi government has issued a new regulation relating to the issuing of trade names (Administrative Resolution No 7 of 2014 on the Rules of Trade Names in the Emirate of Abu Dhabi), which provides clarification regarding the relationship between trademarks and trade names. While the regulation is to be welcomed by brand owners, there are still a number of questions that are to be addressed over the coming months.

Government cracks down on counterfeits in Dubai’s Dragon Mart

Dragon Mart, Dubai’s huge wholesale and retail free zone shopping complex for goods of Chinese origin, has been a major source of counterfeit goods ever since it opened in December 2004. However, recent enforcement activity by the Department of Economic Development suggests that the problem is finally being tackled more effectively.

UAE judiciary sets up IP courts

The UAE Ministry of Justice has issued a new ministerial resolution setting up a specialised department at the federal courts to handle IP cases. However, the decision will not affect cases raised before the Dubai or Ras Al Khaimah courts, which follow their own independent court structure.

New online filing system due to go live

The UAE Trademark Office has announced that the new online filing system, which has been developed over the past several months, will go live on Sunday December 6 2015. Importantly, the online system will be accessible only to UAE trademark attorneys and agents who are registered with the Ministry of Economy. The trademark filing portal and the trademark renewal portal will be available from the onset.

Application fees set to double in unexpected rate hike

The UAE Ministry of Economy has announced a substantial increase in official fees for the registration of trademarks, patents, designs and copyright. The official fees charged by the UAE Trademark Office are already possibly the highest of any national trademark office globally, and these are now set to double.

dotEmarat domain names sunrise period launched

The Telecommunications Regulatory Authority has notified interested persons of the opening of the sunrise period for the internationalised domain name for the United Arab Emirates, dotEmarat. During the sunrise period, the UAE will accept supporting trademarks that do not contain Arabic script. This unexpected departure makes this new IDN a very attractive possibility for brand owners.

New registry for ‘.ae’ domain names established

The responsibility for the '.ae' country-code top-level domain has been transferred to a new entity, the .aeDA. Among other things, the .aeDA proposes to work only with accredited registrars. Therefore, domain name holders with '.ae' domain names in their portfolios should undertake a review to determine whether a change of registrar(s) is required.

WIPO decides first '.ae' dispute

A WIPO panel has ordered the transfer of the domain name 'sonyericsson.ae'
to Sony Ericsson Mobile in the first alternative dispute resolution decision
relating to a '.ae' domain name. The panel held that the respondent had registered
the domain name in bad faith, which is sufficient to allow transfer under the '.ae'
Dispute Resolution Policy.

Individuals may register ccTLDs

UAE Network Information Centre has introduced a new policy, effective
on September 15, which allows individuals to register country-code top-level
domain names. UAE companies had until then to register their brand names and
trademarks in the '.ae' domain space so as to avoid future claims of cybersquatting.

Cancellation of marks: Ministry of Economy's practices in implementing Trademarks Law create challenges

The Ministry of Economy’s interpretation of the provisions of the UAE Trademarks Law relating to the cancellation of trademarks has created challenges for mark owners and cancellation applicants.

Removal of trademarks and trade names from hotel facades

In a remarkable dispute in Abu Dhabi, a leading international hotel and leisure company which owned, operated and franchised hotels, resorts and residences under renowned trade names and trademarks known all over the world, managed a well-known hotel in Abu Dhabi pursuant to management agreements between it and the hotel owner. However, third parties began to claim rights over ownership of the hotel.

Well-known trademark – bad faith and prior use

The Federal Supreme Court recently upheld important principles in relation to well-known trademark protection and elements; bad faith as a reason to lose ownership of a prior-filed application; and the need to consider ownership in the country of origin.

United Arab Emirates

In the United Arab Emirates, trademarks are regulated by the Federal Trademark Law (37/1992, as amended by 8/2002).

The United Arab Emirates is a member of the Cooperation Council for the Arab States of the Gulf (GCC), and as such has approved a law aimed at unifying the trademark provisions across the GCC countries (Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the United Arab Emirates).

Establishing bona fide use in the Middle East and Africa

The <em class="Alright-italic">bona fide</em> use requirement in the Middle East and Africa differs significantly from that in the United States. We examine the different evidence that may be considered when challenging an applicant’s use in administrative or court proceedings

Ajman Customs establishes new recordal system

Following the issuance of an administrative circular, brand owners will now have the option of recording their trademarks with Ajman Customs. This should increase the protection of trademarks in an emirate that has long attracted infringers. The customs authorities in the United Arab Emirates function at a local level, and each emirate applies its own discretion to monitor its borders.

New trademark opposition procedures cause concern

In order to tackle the backlog of opposition cases awaiting a hearing, the UAE trademark office is making a concerted effort to clear the backlog in the next few months. In order to achieve this, opposition hearings are being scheduled with as little as a couple of days’ notice. As a result, those acting for the opposition parties are scrambling to advise their clients, prepare documents, obtain instructions and be available to attend a hearing at the specified time.

Counterfeit goods are recycled instead of re-exported in landmark customs case

Previously, when counterfeit goods were found in Dubai, the Dubai Customs Authority re-exported them back to where they came from, which was generally seen as unsatisfactory for brand owners. However, in a recent case before Dubai Customs involving a major tobacco company, a promising and unique decision was taken and executed for the benefit of the brand owner.