In late 2021, the UAE Government issued 50 new laws, to coincide with the 50th Anniversary of the founding of the UAE. One of these new laws was the long anticipated UAE Trademarks Law - Federal Trademarks Law No. 36 of 2021 (the "New Law"). This follows hot on the heels of the UAE acceding to the Madrid Protocol, which came into effect from 28 December 2021.
Since the publication of the GCC Trademarks Law in 2014, an updated trademarks law has been expected in the UAE. The New Law takes on a number of the provisions of the GCC Trademarks Law, but there are some additional local elements.
A summary of the provisions of the New Law are:
- Expands the definition of a trademark, so that more non-traditional forms of marks are potentially registerable;
- Increases the penalties for trademark infringement both monetary and custodial sentences;
- Makes provision for provisions measures (similar to an injunction) to prevent imminent infringement, which includes the ability to seize evidence as well as products and machinery to produce products;
- Removes the mandatory requirement to record trademark licences;
- Improves on the protection afforded to Well Known Marks;
- Makes provision for multi-class filings (though we do not expect that this will be adopted in the short term);
- Retains the ability to file for series of marks;
- Provides for a smaller appellant tribunal (a 3 person committee, as opposed to the current 9 person committee), with subsequent appeals to the Court retained (which should help to reduce delays in appeals);
- Removes the requirement to publish in two local newspapers as well as the official gazette, so applicants will only need to publish in the official gazette in future;
- Makes provision for partial or full cancellation of trademarks (an area of ambiguity under the old law);
- Makes provision for Collective marks (alongside monitoring and inspection marks);
- Makes provision for protection of marks for Geographical Indications; and
- Increased provisions relating to Customs Clearance, but which also include provision for the importation of small quantities of goods of a non-commercial nature personally brought into the country, and for parallel importation of goods from countries where the items are placed on sale by the owner.
Largely, the changes are good for rights holders, as they help to clarify some of the "unknowns" in the former law, and also introduce new rights and concepts which are commonly used in many other countries, such as Geographical Indications and Collective Marks.
The drawbacks remain around parallel imports, with the New Law permitting for parallel imports from countries where the products are put on the market by the brand owner. This may mean that if products are imported from countries where the products are not officially sold, then it could be possible to stop the parallel importation of such items. This is something to be considered.
While the New Law provides for multi-class filings, as does the GCC Trademarks Law, we expect the UAE to follow the other GCC countries by remaining a "single class" jurisdiction.
We wait to see the Implementing Regulations for the New Law, which are expected during the first half of 2022. These will provide further guidance as to the procedures that the Office and brand owners will need to follow for provisions of the New Law. These will be particularly important for guidance on the requirements for the new types of rights, such as GIs and Collective Marks.
We will provide a further update once the Implementing Regulations are published.