The United Arab Emirates (UAE) has been a member of the Paris Convention for the Protection of Industrial Property since September 19, 1996. The International Classification of Goods and Services for the Purpose of the Registration of Marks under the Nice Agreement (10th edition) is followed in the UAE.
Federal Law No. 8 for the year 2002 amended some articles of the Federal Law No. 37 for the year 1992. The law covers the seven Emirates of Abu-Dhabi, Dubai, Sharjah, Ras Al-Khaimah, Ajman, Fujairah and Umm Al-Quwain. A separate application has to be filed with respect to each class of goods or services. A certified translation of the trademark is to be submitted as well.
Once a trademark application is filed, it is examined as to its registrability. Trademark applications accepted by the Registrar are published in the Trademark Journal as well as in two local daily Arabic newspapers and the cuttings of the notices are to be submitted to the Trademark Office. Any interested party may file a notice of opposition to the registration of the mark within 30 days from the date of any publication. The Registrar’s decision concerning the opposition may be appealed to the Committee and the Committee’s decision to the competent court. In the absence of opposition, a trademark is registered and the relative certificate of registration is issued.
According to Decree No. 12 for 2002 issued by the Ministry of Trade and Commerce on February 3, 2002, payment of registration fees should be made within 30 days from the date of expiry of the opposition period or the date of receiving a decision from the Trademark Office regarding an opposition (if any). Based on this, our invoice covering registration charges will be issued at the filing stage in order to attend the payment of the official fees to the Trademark Office.
A trademark registration is valid for 10 years as of the date of filing the application renewable for similar periods. The renewal fees of a trademark registration can be paid during the final year of the protection period.
A grace period of 3 months is allowed for late renewal with a fine. The renewal of a trademark is also published in the Trademark Journal and in two local daily Arabic newspapers. The ownership of a registered trademark can be assigned with or without the goodwill of the commercial enterprise. Unless an assignment has been recorded in the register and published in the Trademark Journal, the assignment shall have no effect vis-à-vis third parties. Changes in the name and/or address of the registrant must be recorded in order to protect rights. Registered user agreements, license and amendments which do not affect the identity of the mark substantially, limitation of the list of goods and/or services covered by a trademark registration can be recorded as well.
Use of a trademark is not compulsory for filing application for registration or for maintaining the registration in force. However, any interested party may request the court to cancel a trademark registration, if the owner fails to use such a trademark in the UAE for 5 consecutive years from the date of registration.
Illegal and/or unauthorized use of a registered trademark by any third party, use of a fake or counterfeit trade/service mark, application to one’s goods a registered trademark belonging to another party in bad faith, dealing in goods bearing a fake or counterfeit trademark, rendering services under a fake or counterfeit service mark, and use of a trademark that falls under certain categories of unregistrable marks are offenses punishable under the law in the UAE.
Federal Lao No. 37 for the Year 1992
PATENTS and DESIGNS LAW
Federal Law No. 44 for the year 1992
COPYRIGHT and AUTHORSHIP PROTECTION LAW
Federal Law No. 40 for the Year 1992
Federal Law No. 37 for the year 1992 for Trade Marks
We, Zayed Bin Sultan Al Nehayan, President of the United Arab Emirates, after the perusal of the provisional constitution, and:
and according to the presentation of the Minister of Economy and Commerce, the approval of the Council of Ministers and the ratification of the Supreme Council of the Federation,
We have issued the following Law:
In the application of the provisions of this law, the following words and phrases shall have the meanings shown against each of them, unless the context otherwise indicates:
- The State : The United Arab Emirates
- The Minister : The Minister of Economy and Commerce
- The Ministry : The Ministry of Economy and Commerce
- The concerned authority : the concerned authority of the Emirate.
- The Journal : Trademark Journal issued by the Ministry.
- The drawing : each design containing a group of visions (any artistic formation.
- The symbol : the visible drawing.
- The emblem : the engraved marks.
- The inscriptions : the protruding marks
- The photos : man’s photos, whether the photo of the project owners or of others.
- The Register : Trademark Register at the Ministry.
- The committee : The Trademark Committee, provided for in the Law.
A trademark is anything which takes a distinctive form whether names, words, signatures, letters, figures, drawings, symbols, titles, tax stamps, seals, pictures, inscriptions, advertisements or packs or any other mark or a combination thereof, used or is intended to be used, either in distinguishing goods, products or services whatever their origin is, or to show that goods or products are owned by the mark owner by virtue of their manufacture, selection or dealing in, or to indicate the performance of a service.
Sound is considered a part of the trademark of it accompanies thereto.
The following shall not be registered as a trademark or as a component thereof:
Trademarks of international reputation which goes beyond the borders of the original country of the trademark to other countries shall not be registered, unless so requested by its original owner, or by an official power of attorney from the original owner. the degree of knowledge or recognition of the mark in the relevant sector of the public is essential in determining how famous the trademark is.
A famous trademark may not be registered to distinguish goods/services not identical to those distinguished by these marks if :
- Use of the mark implies a connection between the goods/services to be protected and the goods/services of the owner of the original trademark.
- Use of the mark may result in damaging the interest of the owner of the original trademark.
There shall be prepared in the Ministry a register called “Trademark Register”, wherein all trademarks, names and addresses of their owners, kind of their activity, descriptions of their goods, products or services shall be entered, as well as change, transfer, assignment, mortgage, license or any other amendments are made thereof.
Any person may ask for a true copy of what is registered in the Register after the payment of the prescribed fees.
The following persons shall have the right to register their trademarks:
Any person desiring to use a trademark to distinguish goods, products or services, may apply for its registration in accordance with the provisions of this law.
A trademark application shall be filed at the Ministry under the conditions and terms provided in the Executive By-laws.
A trademark may be registered in one or more of the classes of products or services according to the International Classification and its provisions, which the Executive By-Laws specify. However, a trademark application shall not include more than one class.
It may be possible to file one application for the registration of a group of marks which are identical in their substantial elements, and which their differences are in things that do not affect their entity substantially as the color of marks, or the details of products or services related therewith, provided that such products or services belong to one class.
Without prejudice to the provision of Article (26) of this Law, it shall not be allowed to register any trademark which is identical or similar to trademark previously registered for the same classes of products or services, or non-similar class of goods and services if using the trademark may generate and impression of a connection between the goods and services to be registered and those of the owner of the registered mark, or if using the trademark to be registered may damage his interests.
Where two or more persons apply simultaneously for the registration of the same trademark or closely similar or identical trademarks in respect of the same class of products or services, the Ministry shall suspend the registration of all applications until an assignment attested by the disputed parties in favor one of them is produced, or until a final judgment is rendered in favor of one of them.
The Ministry may impose whatsoever restrictions and modifications it may consider necessary for defining and clarifying the trademark in a manner to prevent confusion with another already registered mark or for any other reason it may deem fit. Confusion is presumed in case of using a trademark to distinguish identical classes of goods or services. Where for a certain reason the Ministry rejected a trademark or suspended registration on restrictions or modifications, the Ministry shall notify the applicant in writing of the reasons for such decision.
In all cases, the Ministry has to determine the registration application within thirty days from filing date whenever it fulfills the conditions and terms specified in this law and its Executive By-Laws.
The registration applicant whose application was rejected or its acceptance has been suspended on a condition, may appeal against such decision to the Committee within thirty days with effect from the date of notifying him therewith.
In case the Committee supported the Ministry’s decision of rejection the application or suspending its acceptance on the fulfillment of some conditions, the registration applicant may appeal against the committee’s decision before the concerned civil court within sixty days with effect from the date of notifying him therewith.
The registration applicant shall be considered to have abandoned his application if he does not appeal against the Ministry’s decision or does not appeal against the Committee’s decision within the dates prescribed in this Article, or he does not implement the restrictions or conditions set by the Ministry during the period mentioned in the notification given to him in this respect.
There shall be a Trade Mark Committee formed under the chairmanship of the Under-Secretary of the Ministry of Economy and Commerce and the membership of two representatives from the Ministry chosen by the Minister, a member of the Board of Directors of the Federation of UAE Chambers of Commerce and Industry nominated by the Federation, a member of the Board of Directors representing each Chamber of Commerce and Industry in each Emirate nominated by the concerned chamber. The Committee shall chose from its members a Deputy-Chairman, and its meetings are held in full in the presence of the majority of its members, and decisions are made by the majority of those in attendance. In case of an even vote, the party of the Chairman shall out weigh the other party. The Committee shall meet once every month. The Committee shall have a headquarter chosen by the Ministry. Members of the party shall be awarded based on a decision made by the Cabinet Counsel.
In case the Ministry has accepted the trademark, it has to publish the trademark in the Trademark Journal and in two daily newspapers issued in the State, before registration, at the expense of the registration applicant.
Any interested party may object the registration of a trademark, and submit the written opposition to the Ministry, or send it to the Ministry by registered mail within thirty days from the date of last publication with a copy of the opposition to his application within fifteen days from the date of receiving such opposition.
The registration applicant has to file a written counter statement to such opposition to the Ministry within thirty days from the date of being notified with the opposition. If the counter statement is not received within the prescribed term, the applicant shall be deemed to have abandoned his application.
Before deciding the oppositions submitted, the Ministry shall hear the sayings of both parties or the party requesting such hearing.
The Ministry shall issue a decision rejecting or accepting the registration. It may determine whatever limitations or conditions deemed fit in the latter case.
Any interested party may petition before the Committee against the Ministry’s Decision within fifteen days from the date of being notified therewith. He may appeal against the Committee’s decision before the concerned civil court within thirty days from the date of being notified with the decision.
It shall not entail appeal of a decision of accepting the trademark registration that the registration procedures should be stopped unless the concerned court decides otherwise.
The trademark when registered, its registration shall be with effect from the application filing date.
The owner of the trademark shall, on completion of its registration, be furnished with a certificate containing the following particulars:
country of the Paris Convention for the Protection of Industrial Property
in which the priority application was filed.
Whoever applies for the registration of a trademark shall be deemed the exclusive owner thereof, and the ownership of a trademark may not be contested if it is used ceaselessly by the person who applied for its registration for at least five years from the date of registration without a case raised against him detesting his ownership of the mark. The owner of a registered trademark shall have the right to prevent others from using an identical or similar trademark to distinguish identical or similar or related goods or services to those distinguished by the registered trademark in a manner that may mislead the consumer public.
The owner of a previously registered trademark may, at any time, apply to the Ministry to add or amend the list of goods or services distinguished by such trademark, or to amend such trademark in any manner not substantially affecting its identity. The Ministry’s decision in respect of amending the list of goods shall be issued in accordance with the conditions and provisions relating to the partial cancellation of a registration regarding part of the goods or services. As for the amendment of the mark, the Ministry's decision shall be issued according to the conditions and rules prescribed for the determination of the original registration applications, and such decision shall be subject to petition and appeal in the same ways. Such amendments shall be published in two local newspapers as well as in the Trademark Journal at the expense of the Applicant.
The protection period entailed by the trademark registrations is ten years. The trademark owner may secure the continuation of protection for consecutive periods, each of which is ten years, if he submits an application for the renewal of the trademark during the last year of the current protection period, in accordance with the conditions and terms mentioned in this Law and its Executive By-Laws.
The renewal of trademark registration shall be implemented without any addition examination, and without allowing others to object the renewal. The trademark registration renewal shall be published in the Trademark Journal and in two daily newspapers issued in the State, at the expense of the trademark owner.
In case of a trademark renewal application, the entry of any change of the trademark, or the addition of any products or services in the list of the products or services for which the trademark has been registered, shall not be permitted.
During the month following the expiration of protection period, the Ministry shall notify the trademark owner in writing, at his address appearing in the Register, of the expiration of validity thereof. If the trademark owner fails to apply for renewal within the three months following the expiration of protection period, the Ministry shall, of its own, cancel the trademark from the Register.
The owner of a trademark may apply to cancel its registration, whether for all or for a part of the products or services for which the trademark has been registered. The cancellation application shall be submitted according to the conditions and terms mentioned in the Executive By-Laws of this law.
In case the trademark is licensed for use according to a contract which has been entered in the Trademark Register, it should not be cancelled without a written consent from the licensee, unless the licensee assigns this right clearly in the license agreement.
Without prejudice to the provision of Article (17) of this law, the Ministry of any interested party may apply for the cancellation of the trademark registration which was unlawfully registered. The Ministry shall cancel the registration whenever it receives a final judgment thereof, accompanied by the executive wording of the same.
The concerned civil court shall, on a request from any interested party, may order the cancellation of trademark registration if it is proven that the trademark has not been seriously used for five consecutive years unless the owner of the trademark proves that non-use was for reasons beyond his control such Import restrictions and other governmental procedures that are imposed of goods and services distinguished by the Trademark. For the purposes of this Article, use of the mark by an entity authorized by the owner shall be considered as proof of use by the owner himself.
Upon the request of any interested party, the concerned civil court may order the addition of any particulars which might be ignored to be entered in the Register, the deletion or amendment of any statement entered unlawfully therein, or is inconsistent to the truth. The Ministry also has the right to make such amendments or deletions of its own accord.
The Ministry has to cancel the registration of the trademarks which the Israel’s Boycott Office in the State has decided that they are similar or identical to an Israeli mark, symbol or emblem, as well as the trademarks owned by persons for whom a decision is issued prohibiting dealing with them.
A trademark cancellation from the Register shall be published in The Trademark Journal and two local newspapers at the expense of the Applicant.
If a trademark has been canceled, it shall not be permitted to have it reregistered in favor of others for the same products except after the elapse of three years as of the cancellation date.
Assignment, mortgage or attachment of the trademark ownership may be made with or without the commercial store or the enterprise using the mark for distinguishing the products or services thereof.
The transfer of the ownership of the commercial store or the enterprise includes the trademarks registered in the name of the assignor, and which can be in strong connection with the store or the enterprise, unless agreed for the otherwise.
In case the ownership of the commercial store or the enterprise has been transferred without the trademark, the assignor may continue using the trademark regarding the products or services for which the trademark has been registered, unless agreed for the otherwise.
The assignment or mortgage of a trademark shall not be deemed a proof against others unless entered in the Trademark Register and published in the manner set by the executive By-Laws.
The trademark owners may, according to a written and attested agreement, give a license to one or more persons to use the trademark for all or some of the products or services for which the trademark has been registered, and the trademark owner may use it by himself unless agreed for otherwise.
License agreement for the use of a trademark should be entered in the Trademark Register. The license will have no effect to others unless it has been entered in the Register and published in the manner specified in the executive By-Laws.
The licensee shall not assign it to a third party or give sub-licenses unless the license agreement mentions otherwise. In all cases, a compulsory license to exploit the trademark shall not be mandatory.
Recording the license in the Register shall be cancelled therefrom according to a request of the trademark owner or the licensee after giving an evidence of the termination or the cancellation of the license agreement.
The Ministry shall notify the other party with the application filed to cancel the license. This party may oppose the cancellation application according to the procedures and situations mentioned in the Executive By-Laws.
The License agreement shall not include any texts which may restrict the licensee with limitations not resulting from the rights entitled by the trademark registration, or not necessary to maintain such rights. However, the license agreement may include the following restrictions:
1.Specifying the range of the geographical area for marketing products or services bearing the trademark.
2.Nomination of the license period for using the trademark, considering the provisions of Article 31 of this law.
3.Conditions which warrant the quality control of products under the license, by the trademark owner.
4.The obligation of the licensee to prevent all actions which may lead to lower the value of or cause harm to the products or services bearing the trademark.
Legal persons who work in the control or checking of some products or services regarding their origin, components, manufacturing method, quality or identity or any other property, may ask the Ministry for the registration of a mark specialized as an indication of performing the control and checking.
In all cases, the registration of such mark or its assignment shall be effected only by an approval from the Minister.
The Executive By-Laws shall specify the conditions and rules of the registration of the mark mentioned in the preceding Article, together with the documents to be attached with the registration application.
The registration of such mark shall result in all effects result in all effects mentioned in this law.
In case of the cancellation or non-renewal of such mark, it shall not be registered again for identical or similar products, goods or services.
Any person who commits any of the following acts shall be punished by an imprisonment and by a fine not exceeding (5000) five Thousand U.A.E. Dirhams, or by one of those penalties.
Any person commits any of the following acts shall be punished by an imprisonment not exceeding one year, and by a fine not exceeding – (10000) Ten Thousands U.A.E. Dirhams, or by either of these punishments:
Any person who commits for the second time one of the offences mentioned in Articles 37 and 38 of this law, shall be punished with the same punishment in addition to the closure of his commercial store or enterprise for a period not less than fifteen days and not exceeding six months, together with the publication of the judgment on the expense of the convict, according to the procedures mentioned in the Executive By-Laws.
Any person incurred a harm as a result of any of the acts mentioned in Articles 37 and 38 of this Law, may raise a case before the concerned civil court to ask the person who committed such act, for a compensation suitable with the harms thereof.
The owner of a trademark may, at any time, even before raising any civil or criminal claim, file a petition supported by an official certificate testifying the registration of the mark, to ask for an order from the concerned court, in order to take the necessary conservatory measures, in particular the following:
The court may delegate one or more experts to assist in implementing the conservatory measures. Owners of famous trademarks are excluded from the provision of providing a registration certificate.
The impounded party shall be entitled to file a lawsuit demanding the impounding party to pay compensation within ninety days of the deadline mentioned in the final paragraph of Article (41) of this Law, if no court action was filed against the impounded party, or from the issuance date of the final verdict on the lawsuit filed against him. In both cases, the security deposit shall not be refunded to the impounding party except only after the issuance of a final judgment in the impounded party’s lawsuit or after the elapse of the prescribed deadline without filing the lawsuit.
The court may, in any civil or criminal case, order the confiscation of the seized things or which may be seized later, and deduct their price from the fines or compensations, or for the disposal thereof in any other manner deemed fit by the court. The court also may order the destruction of the unlawful marks, or, if necessary, order the destruction of the products, envelopes, packing materials and other things which bear such marks or pear illegal statements, and machines and instruments used in particular in the act of counterfeit. The court may order all the above actions even in the case of acquittal. The court may also order the publication of the judgment in the Official Gazette or in one of the daily newspapers at the expense of the convict.
Owners of the trademarks registered or used into he United Arab Emirates, on the application of this law, have to apply for their trademarks’ entry in the Ministry’s Register according to the provisions and conditions mentioned in the Law, during a period of one year from the date of the law’s enforcement.
Those who have not fulfilled the conditions prescribed in this law, should adjust their situations within one year from the date of the law’s enforcement. In case the trademark has not fulfilled the conditions prescribed thereof within the period mentioned in the preceding paragraph, it shall be considered null by the power of law.
The first user shall have the priority right to register his trademark during that period. In determining the first use, the following should be considered: its date of start, its continuation, its surrounding circumstances and the trademark registration action.
The Ministry has to notify the concerned authority in each Emirate and the Association of the Chambers of Commerce and Industry in the State, with the names of owners of trademarks registered in the Ministry, their particulars and any change, amendment or cancellation made thereof, within thirty days from the date of registration, change, amendment or cancellation.
Employees concerned with the control of the implementation of the provisions of this law and its by-laws, for whom a nomination decision from the Minister of Justice, in agreement with the Minister of Economy and Commerce and the concerned authority is issued, shall have the power of judicial capture officers. By this power, they shall have the right to enter places, activity of which is included in these provisions of this law, except places of accommodation, with the purpose of securing the implementation of its provisions and its Executive By-Laws and to seize the violating cases. Local authorities in the Emirates should offer facilities to those employees to enable them to carry out their work.
There shall be a decision issued by the Council of Ministers on the fees to be charged for the procedures to take place in accordance with the provisions of this Law.
Any provision which is contradictory to, or conflicting with the provisions of this law shall be mollified.
The Minister shall issue the Executive By-Laws and decisions necessary for the implementation of the provision of this Law.
This Law shall be published in the Official Gazette and come into effect three months as of the date of publication.
(2) A new Article No. (20)- repeated, is to be added to the Federal Law No. (37) for the Year 1992 above stated as follows :
" The Ministry has the right to cancel a trademark which has been unlawfully registered after informing the concerned parties of the cause of cancellation and allowing them to submit a defense of their rights.
Any concerned party may oppose the cancellation at the civil court within 30 days from the notice of cancellation".
Issued in the Presidency Palace, Abu-Dhabi,
Dated Rabie Al-Awal 1413 H
September 28, 1992
•The legalized Power of Attorney has to be attested locally by the Ministry of Foreign Affairs at a corresponding fee. The amount may be USD 75.00 or USD 590.00 depending on the amount paid at the consulate of the origin country.
•A Trademark registration is valid for ten years as of the date of filing the application renewable for similar periods. The renewal fees of a Trademark registration can be paid during the final year of the protection period.
1) Can a part of the registered mark be used Separately?
No, protection of the mark is granted to the shape in which it is registered.
2) How can we obtain the maximum protection in a particular class?
Filing a trademark claiming the class heading in addition to specifying other items of the applicant’s interest in the application will provide the broadest protection.
3) Do the charges differ based on the number of items included in the list of goods/services?
4) Is filing a multiclass application possible in UAE?
No. Separate application should be filed for each class.
5) Is it possible to claim priority in UAE under the Paris convention?
Yes, within six months of the filing date of the priority application.
6) Is it necessary to legalize the Power of Attorney?
Yes. The Power of Attorney should be legalized up to the UAE consulate in the applicant’s country.
7) What are the two types of attestation of Power of Attorney?
The legalized Power of attorney should further be locally attested here in UAE by the Ministry of foreign affairs before submitting to the trademark office. The charges for attestation vary according to the amount charged by the UAE consulate in the applicant’s country. If the UAE consulate in the applicant’s country charges the applicant with USD 600 for legalization, then here in UAE the ministry of foreign affairs will charge us with USD 75 and vice versa.
8) What is the alternative, if there is no UAE consulate in the applicant’s country?
If there is no UAE consulate in the applicant’s country, then the Power of Attorney can be legalized up to the consulate of any other Arab Country (e.g. Saudi Arabia). In this case, we will send this power of attorney to Saudi Arabia to get is super legalized by the Ministry of foreign affairs of Saudi Arabia.
Later, upon receipt of this power of attorney, we will get it legalized by the Saudi Arabian consulate in UAE and then arrange for the local attestation by UAE Ministry of Foreign Affairs which is obligatory in order to complete the full legalization requirements of the Trademark office.
9) Late submission of documents is possible in UAE?
Late submission of the power of attorney is no longer possible in UAE. The original legalized power of attorney should be submitted along with the trademark applications. However, the original certified copy of the priority document can still be submitted later with the late submission charges of USD 65.00 per document.
10) Is it necessary to legalize the Priority document?
No. A certified copy is sufficient.
11) Can bar services & night club services be registered in the United Arab Emirates?
No. Bar & night club services in class 43 are not applicable in the UAE.
12) Is class 33 (Alcoholic drinks) applicable in UAE?
Class 33 is not applicable according to the Law. However, class 32 for non-alcoholic drinks can be the alternative option.
13) Is it possible to register a mark for Pork meat in UAE?
No. Pork meet is not allowed to be registered
14) Can Retail & Wholesale services be registered in UAE?
No. such services can be replaced by using the phrase “the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods namely …… (name of goods) ………
15) Is it possible to file a Trademark with the Geographical indication?
Yes, however, the applicant should submit evidence proving the relationship between this specific Geographical location and the origin of goods or applicant.
Moreover, in most cases the Registrar will request a disclaimer to the GI if used separately and the protection will be granted to the mark as a whole.
16) Will the protection in UAE extends to the seven Emirates?
Yes. United Arab Emirates is a union of seven Emirates and filing a trademark application will cover all these seven Emirates namely Abu Dhabi, Dubai, Sharjah, Ajman, Umu-Al-Quwain, Fujairah & Ras-Alkhaimah.
17) Is Prior Use of a Mark compulsory in UAE?
18) Can a third party file a cancellation action on the basis of Non use of the mark?
Yes. as per the UAE Law, a concerned civil court shall, on a request from any interested party, may order the cancellation of Trademark registration if it is proven that the trademark has not been seriously used for five consecutive years unless the owner of the trademark proves that non-use was for reasons beyond his control such Import restrictions and other governmental procedures that are imposed of goods and services distinguished by the Trademark..
19) Did UAE adopt the nice classification; if yes, which edition?
Yes. 10th Edition of Nice classification.
20) Applicant’s details (Name & Address) mentioned in the Power of attorney should match to the details mentioned in the Application?
The details that are mentioned in the Power of attorney should conform to the details mentioned in the application.
21) Can series of marks be filed in UAE?
Yes. A series of mark can be filed in UAE as a normal trademark at the same charges.
22) Is it possible to file a single application covering all the GCC countries including UAE?
Not possible. A separate national application should be filed for each country.
23) Is Joint applicants possible in UAE?
Yes, It is possible provided that the Power of Attorney is signed by all applicants, notarized and legalized up to the UAE Consulate.
24) Is it possible to amend a filed/registered trademark?
25) Is it possible to file a slogan in UAE?
Yes. Slogan can be filed and treated as a trademark.
26) Is Trademark Marking compulsory in UAE
27) When can we use “™” & “®” with the trademark? Can it be registered with trademark?
TM can only be used when the mark is under the process of registration after filing whereas ® can be used for registered marks and the final registration certificate is issued. No, the marking should not be included in the application.
28) What is the validity of the trademark registration?
10 years; subject for renewal upon expiry.
29) What is the expected timeframe for filing a trademark up to registration?
12 to 18 months.
30) What is the duration of each process (filing, publication & registration)
Upon receiving the instructions, we can file the application (s) within a maximum of 48 hours. The examination by the Trademark Office might occur within 4 to 8 months depending on the backlog at the trademark office and upon receiving the notice of acceptance, we have 30 days to publish the application. Once published, the opposition period ends after thirty days. Finally, the application is ready to be registered and the registration certificate might take two to three months to be issued.
31) Translation / Transliteration of a mark can be registered together?
Yes. It can be registered provided that both marks are used together; otherwise, it is compulsory to file two separate applications.
32) If an application is refused what actions are issued by the Registrar?
An appeal should be filed against the registrar decision within the non-extendible deadline (30 days), otherwise, the application will be cancelled at the Trademark Office automatically.
33) What is the usual deadline for responding to Official Actions?
The deadline for responding to the official action (primary examination notice) is 100 days.
34) Are extensions possible?
Yes, it is extendible.
35) What is the usual time frame of an extension?
The extension of the deadline for the office action is 100 days.
36) Can a letter of consent overcome an objection on relative grounds?
Usually the examiner accepts the letter of consent, however, the same should be legalized up to the UAE Consulate.
37) Are there any restoration provisions?
Restoration of the cancelled mark is not acceptable; but it is possible to re-file the mark.
•The application form may be completed and signed by an Australian patent attorney in the name of the applicant without a Power of Attorney or Appointment of Agent. Applications are examined automatically, without further action on the part of the applicant.
Eight prints of the mark if it is a device mark
3.Recordal of Change of Name / Address
•According to the current procedure of the Intellectual Property Office (IPO), a mark in English / Arabic and its Arabic / English transliteration can be filed together in one application. However, a mark in English / Arabic and its Arabic / English translation cannot be filed as a single application. Accordingly, two separate applications must be filed: one for the mark (in English) and the other application for its Arabic Version.
2.Renewal of Trademark
•The assignment of a trademark should be recorded, and unless it is published in the Official Gazette and entered in the records of the Trademark Office, it shall not be effective vis-à-vis third parties. The assignment of a trademark must not necessarily be submitted with the establishment of the business concern. Changes in the name and/or address of a registrant must be recorded.
•The European Trademark registration covers the 28 European member states in the European Community. Once the European Trademark registration is granted, there will be no more additional procedures to activate protection in any of the aforesaid states. The European states covered by the European Trademark Certificate are as follows:
•The use of class headings in product and service specification will no longer serve to cover all the goods and services included in the corresponding class.
•The assignment of a Trademark can be recorded once the Trademark is registered. In fact, unless an assignment has been entered against the Trademark in the register and published in the Official Gazette, the assignment shall not be effective vis-à-vis third parties. It is noteworthy that the assignment of a Trademark should be made along with the goodwill of the business concern. Changes in the name or address of a registrant, amendment of a Trademark and limitation of goods covered by a registration can be recorded as well.
•As per Section 38(2) (a) to (d), the following may affect establishing of a Hong Kong filing date: applicant's full name and address, a specification containing proper items of goods or services, same representations on T2 and T2S, English translation or transliteration of the elements in the Trademark which are neither English nor Chinese, and color statement on T2A if color is to be protected. If you fail to satisfy the above, an OA will be issued to be replied within a non-extendable term of two months, failing which would invalidate the application.
•As there is a formalities examination, a Filing Receipt will be issued only about two weeks after filing.
(if a mark is registered in black & white, it shall be deemed to be registered for all colors).
•All documents should be in English or a certified / notarized English translation is required.
•The assignment of a trademark can be recorded while an application for the registration of the mark is pending or after the mark is registered. In case of registered marks, unless an assignment has been entered against the Trademark in the register, the assignment cannot be enforced.
•Assignment can be made in respect of either all goods or services in respect of which the Trademark is registered, or of some of those goods or services. If the assignment of the Trademark is without the transfer of the goodwill of business, it has to be registered with the Trademarks Registry within six months from the Deed of Assignment; otherwise the assignment shall not take effect.
•If the documents are made out in any language other than English, translation by a sworn translator is compulsory.
•If an owner of a mark, his legal agent, or successor does not use it without any legitimate reasons in Iran or abroad within the period of three years from the registration date, such mark may be canceled if applied for by any concerned party. Trademark owners are not required to submit any proof of use of the mark, unless a third party files a request for cancellation on the ground of non-use during the term indicated above.
•The above are normal charges for filing a Trademark Application in one subclass up to registration. Since the charges vary according to the number of subclasses, additional charges that will incur will be invoiced to you.
•Search in Iraq may take 12 – 16 weeks more than what is expected.
•Erbil is protecting the Trademarks in Kurdistan region for the new filed applications, but for the already registered trademarks in Iraq / Baghdad, an extension of protection in Kurdistan can be filed at the Iraqi TMO in Baghdad.
•One Power of Attorney can be used for filing several applications in the name of the same applicant.
•Only identical Trademark search is available.
•Official search is suspended until further notice.
•There is no official Trademark search. Results are compiled from the records of the Lebanese Official Gazette.
•The Trademark Office requires all documents to be authenticated from the Libyan Ministry of Foreign Affairs before submitting the application. Authentication charges will be added to your invoice.
•Trademark Certificates are not issued in Libya.
•The assignment of a Trademark should be recorded. Unless it is published in the Official Gazette and entered in the records of the Trademark Office, an assignment shall not be effective vis-à-vis third parties. The assignment of a Trademark must be accompanied with the goodwill of the business concern. Changes in the name and / or address of the registrant must be recorded.
•Any licensing or change of name, address or ownership could be effected on a Trademark application / registration.
•Extra publication charges according to the number of words in the list of goods or the actual size of the Trademark are calculated at the rate of USD 7.00 per 1 col. cm.
•The assignment of a Trademark or service mark can be recorded once the mark is registered in the country. In fact, unless an assignment has been entered against a Trademark or service mark in the register and published in the Official Gazette, it shall not be effective vis-à-vis third parties. The registrant of a Trademark / Service mark is also obliged to record any change in his name and / or address with the Trademark Registry.
•The assignment of a registered Trademark with or without the goodwill of the business, change of name and / or address, registered user agreement and licenses of registered marks, are possible. The introduction of amendments to the registered mark without substantially affecting the identity of the mark or the boundaries of the list of goods covered by the registration of a Trademark is also possible and shall be recorded in the official register.
•As per the provisions of the Intellectual Property Code of the Philippines, which took effect on January 1, 1998, a multi-class trademark application is now acceptable.
2.Renewal of Trademark
•A Trademark registration is valid for ten years from the date of filing the application, renewable for further consecutive periods of ten years each. The renewal fees of a Trademark registration can be paid during the last twelve months of the current protection period. There is a six month grace period within which a late renewal application can be filed, but such a late renewal application is subject to the payment of additional fees. A separate application for the renewal of a trademark registration or any recordal is needed in respect of each class of goods or services as far as trademarks are originally registered in more than one class.
•Certification marks and collective marks are accepted for registration in Singapore. Regulations of use must be filed with the Registry.
•An application should not cover all the goods in one class or the class headings, otherwise, two applications must be filed for the same Trademark in the same class in order to cover all the goods in the class.
•The assignment of a Trademark should be recorded within six months from the date of the transfer agreement. Also, unless an assignment is entered in the records of the Trademark Office, it shall not be effective vis-à-vis third parties. The assignment may be with or without the goodwill of the business. A partial assignment is also possible.
•Publication fees for each additional ten words of the list of goods will be charged at USD 12.00. Late filing of any document within the six months grace period ensuing the filing will be charged at USD 20.00 per month.
•The ownership of a registered Trademark can be assigned with the goodwill of the commercial enterprise. Unless an assignment has been recorded in the register and published in the Trademark Gazette, it shall have no effect vis-à-vis third parties. Changes in the name and / or address of the registrant must be recorded in order to protect rights. Registered user agreements, licenses and amendments which do not affect the identity of the mark substantially, limitation of the list of goods / services covered by a Trademark registration can be recorded as well.
•The assignment of a Trademark can be recorded once the Trademark is registered. It is noteworthy that the assignment of a Trademark should be made along with the goodwill of the business concern. Changes in the name or address of a registrant, amendment of a Trademark and limitation of goods covered by a registration can be recorded as well.
•The assignment of a Trademark can be recorded once the Trademark is registered. In fact, unless an assignment has been entered against the Trademark in the register and published in the Official Gazette, it shall not be effective vis-à-vis third parties. Changes in the name or address of a registrant, amendment of a Trademark and limitation of the list of goods covered by a registration can be recorded as well.