BBUS 305 - Analysis of UAE Trademark Law: Registration & Ownership

This essay provides a comprehensive overview of the UAE's trademark law, as per the BBUS 305 assignment requirements. It delves into the definition of trademarks according to Federal Law, the process of trademark registration through the Ministry of Economy, and the implications of trademark deletion. The essay also examines the legal aspects of transferring trademark ownership, including mortgage provisions, and discusses agreements related to licensing the use of trademarks. Furthermore, it addresses marks allocated for quality control, sanctions for violations, and general transitional provisions within the UAE's trademark legal framework. The document highlights the importance of trademark registration for exclusive protection and the legal recourse available for infringement, as well as the criteria for determining trademark ownership in various business structures. Desklib offers similar solved assignments and resources for students.

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Intellectual Property
To start with this topic of Intellectual Property in the country UAE it must be stated that
Intellectual Property has a vast range. Several law are involved in this regard which
guarantees the rights of the owner of an Intellectual Property. Intellectual Property in the
country UAE may be defined as an original product of human creativity and intelligence
which has a value in the market. For this reason it must be protected by law. In the country
UAE Intellectual Property means innovative and creative ideas, literary works, logos,
products, goods. If a particular business wants to establish an identity which can either be
nationally or internationally then steps should be taken to protect it. Nowadays Intellectual
Property rights has become an issue of global concern, which has a huge effect in every field
like commerce, environment, labour, culture. Intellectual Property also has a huge effect in
technological as well as investment spheres. Therefore, it is necessary to avail Intellectual
Property Rights for a particular business in UAE. (Price, David, and Alhanoof AlDebasi
2017)
As stated above the Intellectual Property has a very wide range therefore many rights
come under the single head of Intellectual Property. Intellectual Property rights in the country
UAE can be divided into three parts. They are Patents rights, Copyrights and Trademarks
Patents rights: In the country UAE patent is a right which is granted to the inventors
of a particular work for the inventions done by him. This can include equipment, software,
technology, tools. The protection of Patent in the country UAE is governed by Federal Law
Number 17 of the year 2002 which was again amended by Federal Law Number 31 of the
year 2006. A Patent right is protected for twenty years. After twenty years the Patent right
must be renewed to protect the exclusive rights attached with it, otherwise the exclusive
rights attached with it and the market value of the particular Patent in the country UAE will

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be exhausted thereby making it a problem for the owner of the particular Patent in the country
UAE.
Copyrights: Copyrights in the country UAE protects the authors in relation to
intellectual property rights like television programmes, books, radio programmes, photos,
paintings, software. In the country UAE Copyright can be registered in accordance with the
Federal Law Number 7 of the Year 2002. Copyright should be a result of a creative or
intellectual work which must be expressed in the form of any object. Copyright is protected
for fifty years in the country of UAE. After fifty years the Copyright must be renewed to
protect the exclusive rights attached with it, otherwise the exclusive rights attached with it
and the market value of the particular Copyright in the country UAE will be exhausted
thereby making it a problem for the owner of the particular Copyright in the country UAE. If
the owner of Copyright is a biological person then Copyright will be calculated in accordance
with the rule which is stated in the Copyright Law of the country UAE.
Trademarks
Definition: According to the Federal Law number 37 of the year 1992 on
Trademarks , it can be stated that trademark is any different type of name, word, logo, figure,
signature, letter, graphics, seal, pattern, title, picture, hallmark, announcement, and any other
type of marks if they are used to distinguish goods and products from any source, or to
specify that a particular goods or products belong to a particular owner of that trademark. By
Article 2 of UAE Trademark Law 2002 (amended) it can be stated that trademark is a
different form of word, logo, name, letter, figure, signature, picture, seal, hallmark, graphics,
tax, stamp or any other symbol. A trademark is therefore put on some specific goods for a
particular enterprise so that it can be differentiated from all the other goods which are

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identical to it which are offered by its competitors thereby giving the particular product a
unique symbol. (Alfadhel et al. 2017). Gulf Cooperation Council has made a Unified
Trademark Law for the Region of Gulf can be implemented on all its member countries
which includes Kuwait, Oman, Saudi Arabia, Qatar, Bahrain and United Arab Emirates.
(Iqbal, et al.2015).
Bass Brewery’s label which incorporates a triangle logo for ale was the first
Trademark which was registered in the Trade Mark Registration Act 1875 in the Ministry of
Economy in the country UAE.
Trademark was first used in Middle Ages in some specific trading and manufacturing
companies. People in Italy and France were used to with putting their names on the products
of their company. During that time there were two purposes of use trademarks. The first
purpose was to brand trademarks which were had been used on animals, which were used to
indicate ownership. The second purpose of trademarks was that it was used by traders and
manufacturers to identify the products of their company and thereby to guarantee the
originality and quality of the products of that particular company. Use of trademarks was a
legal commitment then which must be used by every manufacturer and trader so that they can
trace their products. (https://government.ae/en/information-and-services/business/intellectual-
property)
Service Trademark: Service trademarks are different from normal trademarks. In case of
Service Trademarks, the trademark is used to distinguish tools or equipment which is used to
provide the service to a particular enterprise.
There are several advantages of owning a trademark. They are as follows:
Firstly, trademark being an asset is precious to its owner.

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Secondly, the owner of the particular Trademark can only be financially benefited
from it. Though if the owner of a particular trademark wants he can exploit the
trademark by the way of commercialisation, assignment of licence.
Thirdly legal owner of a particular trademark only has the right enforce trademark
rights. He can also prevent any infringement in this regard.
Registration of Trademark: According to the Federal Law number 37 of the year 1992 of
the country UAE for the registration of trademark the Ministry of Economy of UAE is the
competent authority. To register a particular trademark, an applicant has to submit an online
application to the website of the Ministry of Economy, UAE with the following documents.
Firstly, logo of the Trademark intending to register
Secondly, power of Attorney for the Trademark
Thirdly a copy of the commercial licence
Fourthly, any other priority document
Fifthly a copy of his passport.
Logo of Trademark means the particular logo which a person intends to register,
for which he will be getting the exclusive rights. The person must have the Power of
Attorney for the Trademark which he intends to register. A copy of the commercial
licence must also be submitted while registering a particular Trademark. Here the
commercial licence stands as an evidence of a particular business. Here by any other
priority documents it is meant that if there is any other necessary documents which
can be needed while registration of a particular Trademark must also be submitted. A
copy of the passport of the particular person who intends to register a particular
trademark must also be submitted while registering a particular Trademark. Here this
stands as a prove of the identity of the particular person who intends to register a

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particular Trademark. Thereby by showing the documents stated above registration of
a particular Trademark can be appealed to the Ministry of Economy in the country
UAE.
Any citizen of UAE, foreigners as well as an artificial and natural persons who are
practising any profession or is involved in service of industry or business can apply for
trademark. Foreigners as well as artificial and natural persons who are practising any
profession or is involved in service or business in any other country apart from UAE can also
apply for trademark on basis of reciprocity. This is stated in the Federal Law number 37 of
the year 1992 on Trademarks. Application for registering a trademark must be filed by the
applicant, by his trademark representative, by his trademark agent or by a trademark attorney.
Here the applicant or his representatives must be a citizen of UAE or must be domiciled in
UAE. The representatives stated above will require the power of attorney which must be
executed before the notary public. In this case power of attorney must be submitted along
with the application at the same time while filling it. The trademarks which are registered will
enjoy exclusive protection. But protection for the trademarks which are not registered is
limited. Courts of UAE in several cases have granted protections against the infringement for
all the well-known trademarks which are unregistered. According to Trademark Law of UAE
it does not state any particular criteria to consider a trademark. The courts of UAE has set
some precedents for determining if a mark or a symbol is well known or not. In this case
well-known means a mark or a symbol which in internationally renowned. Another factor for
considering this well-known status is that the mark or the symbol has to be popular in the
public. While registering a particular mark or symbol after paying the fee for registration, the
registration certificate for the trademark will be issued. The registration certificate will have a
detailed information of the particular trademark. It includes the registration number of the
trademark, the name of the owner, a detailed list of goods and services along with the

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characteristic features of the trademark. It will also contain number along with the date of the
international priority right along with the name of State Member in Paris Convention for the
Protection of the Industrial Property. This is stated in Article 16 of the Federal Law Number
37 in the year 1992. After the registration of the trademark the owner will have exclusive
rights in relation to the particular trademark and thus this will prevent any other person from
using any similar symbol in respect of goods and services in which might mislead the
consumers. Once when a particular mark or symbol is registered if any amendment is needed
with respect of the trademark then it should be filed to the ministry. The Ministry of
Economy of the country will thereby examine the particular trademark and will therefore
determine if it can be amended or not. Once the application for amendment is accepted, it will
be published in the Trademark Journal and two other local newspapers. The time needed for
the registration of a trademark is twelve months approximately. Another essential
requirement for registration of a trademark is that it must be presented in a written format and
must be signed duly. (Massadeh, et al2017)
Deciding the owner of a particular Trademark: In cases while deciding that who will
be the owner of a particular trademark it will be relating to the type of the business, the
structure of the business along with the strategies involved in it. It also includes the goals
which are adopted by the particular business. Usually at the time of establishing a company
the trademark with regards to it must be registered under its name and that company will be
the owner of the particular trademark. Sometimes a person creates a particular trademark.
Then if he intends to commercialise it he can enter into partnership contract with some of the
investors of the company. Sometimes when the partnership is new, then the person can keep
the trademark by his own personal name while granting the partnership organisation or the
person who is the partner the licence of using the particular trademark. Sometimes if the
trademark in question is too personal, like the personal name of person in these cases he

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would be the owner of the Trademark. In case of joint venture companies, it must be noted
that who will be the owner of the Trademark. In this case the Trademark can be owned by
either of the partners. But in some cases the partners of the company must clearly agree as to
who will be the owner of the Trademark or if they own it jointly. The contract of joint
venture must clearly uphold the rights of the parties to the contract in relation to Trademark.
It must also be clearly stated that if the joint venture dissolves then what the necessary steps
which must be taken are. Sometimes when a number of affiliated companies are using one
particular trademark, then normally the whole group company will be the owner of the
particular Trademark. Then the company will be granting licences its affiliates for using the
particular Trademark. But if the affiliated companies use separate trademarks, then the group
company will have the ownership of all the Trademarks. In cases if each of the subsidiary
companies has its personal trademark, then the assets of that particular subsidiary company
will be increased. But in those cases each of the subsidiary companies will be responsible for
their personal trademarks and also with regards to the maintenance of their personal
Trademark. In some cases if the group of companies is the owner of the particular trademark,
then it will transfers ownership of its Trademark to the subsidiary company.
The position of the Trademark of a holding company must be subjected to certain
consideration, while considering the nature of the particular Trademark and with regards to
the laws which are governing it. Many aspects must be taken into account while determining
the actual owner of a particular Trademark.
According to Article 19 of the Federal Law Number 37 of the year 1992, UAE a
trademark which is registered gets protected for ten years. After ten years the registration of
registration of the particular trademark it must be renewed to protect the exclusive rights
attached with it, otherwise the exclusive rights attached with it and the market value of the

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particular Trademark in the country UAE will be exhausted thereby making it a problem for
the owner of the particular Trademark in the country UAE.
In Scandecor Developments AB v. Scandecor Marketing AB, 2001 UKHL [UK] case
the UK House of Lords stated that it is necessary to guarantee the origin of the trademarks to
distinguish it from others. It is hereby stated that where from the Trademark has been
originated must be guaranteed in the country UAE.
Deletion of Trademarks: The registration of a particular trademark can also be
cancelled or deleted by the competent authority of the Country UAE which is the Ministry of
Economy in the following situations:
If the owner of the registered trademark appeals for cancellation of the registration
through an application to the Ministry of Economy of the country UAE. In cases where a
licence agreement is involved, the Ministry of Economy of the country UAE will ask for the
consent of the particular licensee before deleting the registration of the trademark. Ministry of
Economy of the country UAE can also cancel the registration of a trademark on the request
from a third person. In this case the Ministry of Economy of the country of UAE will have to
first notify to the owner of the trademark stating the reasons on the basis of which the
cancellation process will take place. Then the Ministry of Economy of the country of UAE
will hear from the parties the particulars regarding the argument and then it will take a
decision as it feels necessary. This decision of the Ministry of Economy of the country of
UAE can also be challenged in Courts of UAE. Registration of a trademark can also be
cancelled by an action of the Court of the country UAE when it is not used. This can happen
when a third person who has interest in this regard appeals to the Court. Here the third party
must prove in the court that the registered trademark in question has not been used for at least
five years. The owner of the trademark in this case has to prove in Court that the trademark in

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question has been in use. For all jurisdictions where Trademark must be registered accounts
to removal when the particular Trademark is not used which is normally for at least five
years. Therefore the intention for using a particular Trademark must be proved with
evidences by showing that the Trademark will be used widely.
The Dubai Court of Cassation Commercial Chamber in Lanzo case No.297/2001
decided to strike out and thus cancel a particular trademark because it was too similar or is
identical to a previously registered trademark.
Transfer of Ownership of Trademark: According to Federal Law number 37 of the
year 1992 of the country UAE the owner of the trademark can assign his rights to a third
person. The Agreement for assigning must be submitted to the ministry so that they can use it
as prove of consent. The Agreement for assignment should always be notarised in this regard.
The owner of the trademark can also license his rights to a third person. According to
Trademark Law the time period of licence cannot exceed the time period of the registration of
the trademark. According to Federal Law number 37 of the year 1992 of the country UAE a
licence agreement should be a written and a notarised one. A licence agreement must also be
recorded in Trademark Registry in the country UAE. According to Article 27 of Federal Law
number 37 of the year 1992 of the country UAE a trademark can also be mortgaged to a third
person. Here in the same way as stated above the procedure of mortgage is to be done.
Mortgage of Trademark: A Trademark can also be mortgaged in the time of need for
gaining money to repay some kind of loan or debt in the country UAE. According to Article
29 of the Federal Law Number 37 of the year 1992 of the country UAE mortgage of a
Trademark must not be given to a third party before entering it under the register of
Trademarks. It must also be announced in a specific manner which is stated in the Executive
Regulations of the country UAE.

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Agreements licencing the use of trademarks: According to Articles 30,31,32,33,34 of
Federal Law number 37 of the year 1992 of the country UAE licensing of trademarks can be
done on the basis of a written as well as notarized contracts by which the owner of trademark
license one or may be more than one persons to use the trademark. It is stated in the Federal
Law number 37 of the year 1992 of the country UAE that the owner of the trademark has the
liberty to choose any person upon whom he will grant the license in the UAE.
License can be of two types Exclusive and Non- Exclusive. By Exclusive license it is
meant that only that particular person on whom the trademark is licensed can use it. While by
the Non-exclusive once it is meant that a license can be used by more than one party.
According to the Federal Law number 37 of the year 1992 of the country UAE the license for
the trademark must be recorded to the ministry otherwise it shall have no effect while using it
against the third parties. (Sutova, et. al 2018).
Sanction: According to Article 37 of the Federal Law number 37 of the year 1992 of
the country UAE it is stated that if a person forges a registered trademark thereby misleading
the common people and uses it with a wrong intension then that person will be liable to
imprisonment and a fine of at least Dh. Five thousand will be imposed upon him. If a person
with a wrong intension uses the registered trademark of a product which actually belongs to a
third person then he will be liable to imprisonment with a fine of at least Dh. Five thousand.
If a person intentionally sells or offers to sale or negotiates to sell or acquires for sale forged
products by illegally placing the trade mark, then that person will also be liable to at least Dh.
Five thousand.
According to Article 38 of the Federal Law number 37 of the year 1992 of the country
UAE it is stated that if a person uses the trademark which has not been registered then under
Article 3 of the Federal Law number 37 of the year 1992 of the country UAE that person will

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be punished with an imprisonment for not more than one year and with a fine of at least Dh
Five Thousand which may extend to Ten Thousand. If a person illegally notes a particular
trademark on commercial papers thereby making common people believe that a particular
trademark is registered then that person will be punished with an imprisonment for not more
than one year along with a fine of at least Dh Five Thousand which may extend to Ten
Thousand.
According to Article 39 of the Federal Law number 37 of the year 1992 of the country
UAE it is stated that if a person repeats any of the offenses which are stated above in Articles
37 of the Federal Law number 37 of the year 1992 of the country UAE and 38 of the Federal
Law number 37 of the year 1992 of the country UAE will be liable to the same punishment
along with the closing of his commercial premises for a period of at least fifteen days which
should not be extended more than six months the judgment will be published at his cost.
In all the above stated cases the aggrieved parties must lodge a complaint to the competent
court to claim for damages according to Article: 40 of the Federal Law number 37 of the year
1992 of the country UAE. The aggrieved party must file a petition according to Article: 41 of
the Federal Law number 37 of the year 1992 of the country UAE before a competent court
along with his official registration certificate.
Trademark cases before the courts of UAE decided by judges alone. No jury trials are
involved in the United Arab Emirates. The judge can ask the advocates suitable questions
with regards to the case during the hearing. But in practice there is very little chance of oral
advocacy. Trademark litigation in the country United Arab Emirates is usually conducted
principally by the way of exchanging of written memorandum in each of the hearing of the
particular case.

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The Emirati Federal Court of Cassation while deciding a case stated that if a
trademark is created dishonestly to confuse the common people regarding a particular
trademark then it will be taken as a crime and as a result of this the person will be liable to
punishments.
General Provisions and Transitional Provisions: Articles 44 to 50 of the Federal Law
number 37 of the year 1992 of the country UAE deals with the General Provisions and
Transitional Provisions. It is stated that the owners of the Trademark has to apply to the
Ministry after the registration of the Trademark. It should be done according to the provided
terms and conditions within one year of enforcement. If someone is not satisfied with the
conditions provided then they has to adjust their status within a year. But if the conditions
provided are not fulfilled within the stated time then the registration of the Trademark will
expire. After this the Ministry has to inform the Competent Authority of each Emirate, the
“Federation of Chambers of Commerce” and the “Chambers of Commerce and Industry” the
owner’s name of a registered Trademark which is registered in the Ministry. They also has to
inform about any change which is made in this respect within thirty days from the date of
registration. They can make any investigation if they feel it necessary. But they will follow
the decision taken by Minister of Justice. A resolution will be used by the cabinet regarding
the fees which must be taken for the procedure. The Minister can also issue regulations which
he feels necessary for the implementation of provisions. The law stated above will be
published in the Official Gazette within three months.
Thus, to conclude this topic of Trademark which comes under the head of Intellectual
Property rights it must be stated that Trademark is a unique mark and it is totally different
from other marks. Trademarks must be registered to gain the exclusive rights which are
attached to it by the owner of the Trademark. Registering the Trademark also helps a
particular company in many ways specially regarding its assets. For registering a particular

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Trademark the whole procedure must be completed sincerely. While in some cases
registration of a particular Trademark can also be cancelled if the specific laws attached to it
is not maintained. In some extreme situations a registered Trademark can also be mortgaged
to a third person for the monetary benefit of a particular company or to repay any loan or
debt. By registering the Trademark exclusive rights are gained by the owner of the
Trademark. But at the time of necessity this ownership of Trademark can also be transferred.
The Trademark which is registered must not be identical to any other Trademarks. As this can
create confusion and thereby causing a judicial proceeding. If this situation arises then the
Trademark which was registered earlier must be given the exclusive rights there by
cancelling the registration of the other Trademark. If someone intentionally tries to confuse
the common people regarding a particular Trademark or if someone intentionally forges the
Trademark which belongs to any person then that person can appeal in court of the country
UAE and claim his rights. This will thereby give rise to judicial proceedings in the country
UAE. Thus, it must be stated that Trademark which comes under the head of Intellectual
Property is a wide range of and a bunch of exclusive rights which are granted only to the
owner of the particular Trademark by the Ministry of Economy in the country UAE. The
Trademark in question must also be included in the Register of Trademarks.

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Reference List:
Alfadhel, Lolwa Naser Mohamed. Trademark Enforcement through Border Measures: The
Case of the Gulf Cooperation Council States (GCC). Diss. Queen Mary University of
London, 2017.
Federal Decree number 20 of the year 1996
Federal Decree number 21 of the year 1997
Federal Law Number 17 of the year 2002
Federal Law Number 31 of the year 2006
Federal Law number 37 of the year 1992 on Trademarks of the country UAE
https://government.ae/en/information-and-services/business/intellectual-property
Iqbal, Asif, Mohammad Jomoa, and Tariq El-Abdeen. "The Gulf Cooperation Council (GCC)
Trademark Law and its Impact on Current Saudi Trademark Law and Practice." (2015).
Lanzo case No.297/2001
Massadeh, Firas, and Fayez Al-Nusair. "Consumer Protection in The UAE: The Trademarks
Act in Light of TRIPS Provisions." (2017)
Price, David, and Alhanoof AlDebasi. Protecting Intellectual Property in the Arabian
Peninsula: The GCC States, Jordan and Yemen. Routledge, 2017
Scandecor Developments AB v. Scandecor Marketing AB, 2001 UKHL [UK] case
Sutova, Milica, and Ksenija Vlaškovic. "Legal protection of the trademark rights in license
agreement." Fifth international scientific conference" Social change in the global world".,
2018.

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The Copyright Law of the country UAE.
Trade Mark Registration Act 1875
TRIPS Agreement
UAE Trademark Law 2002