Trademarks and Registration under United Arab Emirates Law Report

This report provides a detailed analysis of trademark law in the United Arab Emirates, focusing on the Federal Law No. 37 of 1992 and its subsequent amendments. It explores the definition of trademarks, the conditions for registration, and the legal terminology used within the context of UAE law. The report highlights the importance of trademarks in the modern business environment, emphasizing their role in brand identity and consumer purchase decisions. It examines the provisions related to well-known trademarks and the protections afforded to them, referencing relevant case studies and the opinions of legal experts. Furthermore, the report considers the influence of international treaties, such as the Paris Convention and the TRIPS Agreement, on the UAE's trademark regulations. The study also delves into the issue of trade names versus trademarks, providing a comprehensive overview of the legal framework governing intellectual property in the UAE and its implications for businesses and consumers. The report also discusses the importance of trademark registration and the consequences of infringement, including penalties and compensation.

Trademarks and Registration
under United Arab Emirates
Law
1

TABLE OF CONTENTS
Introduction......................................................................................................................................3
Trademark law of UAE....................................................................................................................3
Legal terminology........................................................................................................................5
The Federal Law No. 37 of 1992 on Trademarks........................................................................5
Fame provisions in Trademark Law............................................................................................6
Issue of Trade names vs Trademarks...........................................................................................9
Paris convention (1883).............................................................................................................11
Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement (1994)................13
Conclusion.....................................................................................................................................15
References......................................................................................................................................16
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INTRODUCTION
Trademark is a recognizable sign or mark which provides distinct identity to the goods
and services in the market. In present era, vital importance has been provided to the trademarks
because it creates immense addition to the value of business and commercial transactions. It is
because; these marks have substantial impact on public and influence their purchase decisions
due to factor such as brand loyalty 1. By considering this aspect, legislation had developed
specific provisions to provide protection to the intellectual property from the act of infringement.
United Arab Emirates is considered to be world's premier trading hub. Thus, government
authorities had developed effective regime for the protection of business as well as customers 2.
Further, they had developed standards for brand owners’ rights for effective protection at both
domestic and international level.
Present study is focused on evaluation of civil protection provided by trademark law in
UAE to the well-known trademarks. For this aspect, description will be provided regarding the
Federal Law No. 37 of 1992 on Trademarks. This description will be supported by amendments
taken place in 2000 and 2002 with particular reference to international treaties such as Paris
convention (1883) and TRIPS Agreement (1994). For better understand, evaluation of law will
be referenced by previous case studies and opinion of legal experts and scholars on it.
TRADEMARK LAW OF UAE
Trademark law is important legislation developed for the protection of intellectual
property in UAE from the act of infringement. This legislation is governed by provisions
described under The Federal Law No. 37 of 1992 on Trademarks. These provisions were
introduced by Late Sheikh Zayed bin Sultan Al Nahyan. He had recognised the importance and
benefits of protection provided through provisions of trademark for prosperity of local economy.
With the changing environment and operation activities, this law has amended by introduction of
Law No. (19) of 2000 and Law No. (8) of 2002. This legislation provides protection in UAE for
1 A., J. Iqbal, Mohammad and Z. Tariq ,. 'The Gulf Cooperation Council (GCC) Trademark Law and its
Impact on Current Saudi Trademark Law and Practice.' Available at SSRN 2691888 2015.
2 M. Teotia and T. K. Bandyopadhyay 'Applicability of Tort Law for Protection of Trademark.'
Intellectual Property Rights. 2015.
3

the registered trademarks. Objective of this legislation is to protect the interest of businesses as
well as customers in the country. In this law description is provided regarding definition of
trademarks and conditions to be satisfied for its registration.
Trademark law in UK sets a comprehensive regime in order to govern norms of providing
protection to unique marks related to goods and services. In this aspect, benefit and legal
protection is granted to the trademark owners along with the duty for renewal of protection after
completion of time3. Rules and regulations covered in this law also provides mechanism for the
registration procedures and sets out the consequences for the act of infringement of such marks.
In accordance with the provisions of this law, infringement is a deliberate act conducted by
person to deceive public in order to earn unjust benefits. In this act, individual sold goods and
services under similar or resembling mark. Breach of provisions described under this law can
result in imposition of penalty in monetary terms and sentencing. In addition to this, guilty party
will also have risk for confiscation of goods and services as per the claim of original owners.
This claim is made against the guilty for the objective to attain compensation for loss under the
UAE civil code. However, described provision under this legislation is applicable only on
registered trademarks. On the basis of this aspect, unregistered mark cannot make claim for
protection from the act on infringement.
Registration of trademark is important because there is severe risk to the user of
unregistered trademark users and the owners of registered trademarks that their rights to use of
respective mark may be limited or cancelled under the provisions of UAE law. The position with
respect to previous use of trademark is not explicitly regulated under the norms of legal regime
of the country. With the implementation of 1992 of Federal law no. 37 concerning trademarks
had provided protection to the owners of registered marks. However, they were required to make
re-application for the registration with the Ministry of Economy4. In addition to this, for the
3 A. Iqbal, et al., 'The Study of the Interrelation between Law Programs and Digital Forensics in UAE
Academia.' In Proceedings of the 2013 on InfoSecCD'13: Information Security Curriculum Development
Conference,. ACM, 2013, p. 100
4 L., Nurrokhmah, M. Toufic and RM A. Mohammad, 'The evaluation of monoethanolamine-based CO 2
post-combustion capture process waste handling approaches considering the regulations in UAE' Energy
Procedia 37 2013 pp. 751-758.
4

assurance that proprietors are making previous use of mark were provided the opportunity for
retention of ownership during the initial year of transition period.
In order to support international regimes and to provide better protection to the well-
known marks, United Arab Emirates had joined membership of various international treaties
such as World Trade Organization (WTO) and World Intellectual Property Organization
(WIPO). In addition to this, they are signatory to the major conventions and treaties of IP such as
Berne Convention, Paris Convention, Rome Convention, WTO’s Agreement on Trade-Related
Aspects of Intellectual Property Rights (TRIPS) and Patent Cooperation Treaty.
In addition to this, UAE had adopted various federal laws in their national regime in
order to provide better protection and enforcement to the trademarks, industrial designs,
copyright and patents. Furthermore, they had developed separate legal system Dubai
International Financial Centre (DIFC) for the drafting of IP laws. The UAE had also accepted the
membership of the Gulf Cooperation Council (GCC) along with Qatar, Kuwait, Bahrain, Saudi
Arabia and Oman).
Legal terminology
Legal definition of trademark
In accordance with the Article 2 of the legislation, anything can be considered as
trademark which have distinctive form such as words, names, drawings, figures, signatures,
letters, engravings, packs, advertisements or any other mark that is used for the purpose to
provide distinct identity to the products and services5. Protection from trademark law is provided
if individual or entity is able to satisfy the description provided in the definition of the law.
However, if any of the provision described under article 3 is satisfied then protection will not be
provided.
Well known trademark
Well known trademarks (in terms of goods and services) can be defined as mark which is
substantial among public segment. Further, use of this mark in relation to other goods and
services will create link between these two marks.
5 N. Zouag, and K. Molk, 'Intellectual Property Rights, Innovation, and Knowledge Economy in Arab
Countries'. Open Source Technology: Concepts, Methodologies, Tools, and Applications: Concepts,
Methodologies, Tools, and Applications. 2014. p. 227.
5

The Federal Law No. 37 of 1992 on Trademarks
In accordance with the study of Price (2012), UAE was in position to trace their
recognition for the well-known trademarks in 1973 only two year after the formation of country
even before the enactment of the Trademark law6. This aspect can be noticed by the case of
Thani Murshid African Near East Co v Al-Nawis Refrigerator Org, Abu Dhabi Federal Court of
Appeal (Abu Dhabi Supreme Court)7. This case shows first impression by the court of law
regarding the act of agent of Dutch company whether production of tinned milk under the well-
known RAINBOW mark can prevent a local company selling the same product under similar
mark. In this case, decision was provided by the court of law, use of similar name for the
objective to earn higher profits or additional advantage is not legal act. In addition to this, party
is also deceiving consumers because they are purchasing products as they have confidence on the
quality of brand not on the name of local supplier. This decision is still famous and considered
valid in the present cases.
In 1981, the Federal Court of appeal of Abu Dhabi (Abu Dhabi Supreme Court) had
identified the provisions for the protection of well-known marks by providing favourable
judgement to the McDonald. Company had successfully enjoyed the court decision against usage
of mark by defendant through trade license to operate under the MCDONALD’S mark in the
United Arab Emirates8. In this case decision, court had commented that trademark is owned by
claimant since 1970 and products provided by them are distributed throughout the world. By
considering this aspect, use of similar mark by making some minor distribution shows the
objective to deceive public. On the basis of this justification, they had drawn conclusion that use
of similar mark to the well-known international marks is irrelevant through this statement “It is
irrelevant in this context that the mark is not registered in the United Arab Emirates; it suffices
that it is internationally well-known.”
6 D., Price, The GCC Intellectual Property Regimes: Global Harmonization or Regional Integration?.' In
The GCC Economies, Springer New York, 2012. pp. 131-146.
7 Case 3 20/72, June 24 1973, ‘Rainbow’, ICC 1981 p 883-90
8 (Abu Dhabi Fed Ct of Appeal, Case 240/80, ‘McDonalds’, March 18 1981, ICC 1982 p 658).
6

Fame provisions in Trademark Law
Trademark law developed in 1992 by UAE was in amended in 2000 (by Fed Law 19) and
in 2002 (by Fed Law 8). Objective of this amendment was to recognize well-known marks
explicitly under Article as it prohibits the registration of marks that merely comprises translation
of famous marks for the prevention of confusion. Provisions covered in this article are supported
by Amended by Federal Law No. (8) Of 2002. In this aspect following points are covered:
 Potential mark for protection not having distinctive property or character and it is merely
supported by identity of similar goods and services.
 Marks related or similar to government emblems or logos or purely religious character
and which are in contradiction with the public morale 9
 Marks related to geographical names or other factors used for creation of confusion
regarding their origin or source
 Use of name, title or image of third person without their consent
 Use of honorary degrees without having their legal entitlement
 Prohibited marks owned by legal entities or natural person
 Marks supported by following words or expressions or similar to it:
Concessionaire, Concession, Registered Drawing, Registered, Imitation is Considered
Forgery and Copyright
 Domestic and foreign medals and currency
 Use of existing or similar to existing registered marks.
Objective of this provision was to impose restriction on protection of marks which does
not have legal implication or entitlement. With this approach protection is provided to the
existing marks registered under law.
Article 4 of this legislation states that any trademark having goodwill in international
market beyond the boundaries of the domestic country then it will not be registered under this
law until and unless it is authorized by the individual has ownership or official attorney.
Goodwill of the trademark will be determined on the basis of public awareness10. For example in
the above describe case, public of UAE was aware with the trademark of McDonald and
9 I. Calboli and D. W. Jacques. The Law and Practice of Trademark Transactions: A Global and Local
Outlook. Edward Elgar Publishing, 2016.
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Rainbow. Due to this aspect, defendants were able to take unjust benefit of using the name of the
company. Further, this provision states that trademark with goodwill may not be registered under
this legislation for distinguish of products and services if following aspects are satisfied:
 Use of trademark by individual shows link between goods and services to be
distinguished with the goods and services of original trademark owner
 Use of such trademark led to act of potential prejudice to the original owner of the
trademark.
By considering these provisions, Houissa (2014) had stated that legislation of UAE had
imposed restriction on the registration of marks which are merely comprised translation of
famous mark in international market originated from the other countries. However, exception has
been provided that registration will be considered valid if application is registration is supported
by owner or individual having official authority in this aspect11. In accordance with the viewpoint
of Houissa with this approach, legislation also supports use of international trademarks along
with their protection. In order to enhance their effectiveness they had not provided protection to
all the global trademarks. By considering this aspect, they had stated that goodwill of market will
be based on their market reputation to justify the protection and prevention of unjust use of this
law.
Study of Almezaini (2012) shows that trademark law of UAE had also imposed
restriction on the registration of well-known marks even if good and services are non-identical or
dissimilar to the actual good and services in situation where use of mark will indicate the
connection with the existing mark or it can impose damages on the rights of original holder of
trademark12. According to Rahman (2013), owner of the well-known mark is also in position to
protect their rights whether they have registered it or not under international conventions under
10 B. J., Young, 'A Comparative Study of the Legal Frameworks and Protection of Digital Content in the
United Arab Emirates and Australia in Relation to the Practice of Blocking Digital Content on the Basis
of Location (Geo-Blocking) and its Associated Circumvention Technologies.' International Journal of
Journalism & Mass Communication, 2014.
11 K. S., Houissa, Copyright Laws in the Arab World: A Shifting Predicament in the Digital Era. Libri,
64(3), 2014, pp.293-306.
12 A., Almezaini, The UAE and foreign policy: foreign aid, identities and interests. Routledge, 2012.
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the Agreement on Article 16 of TRIPS and on Article 6 of the Paris Convention for the
Protection of Industrial Property by virtue of UAE accession to the World Trade Organization
and signing of the Paris Convention in 199613.
Legal study of Rahman (2013) shows that owners of international marks had prevailed in
several actions in the UAE at both the level i.e. courts and administrative in order to block the
infringement from the registration. These claims were held successful by these provisions as they
had demonstrated that their marks are famous through worldwide registration, market
expenditures, consumer recognition, significant advertising and long standing international use.
This aspect shows that, UAE had provided justified basis for the civil protection to the existing
trademarks. In this aspect, they had also shown leniency by keeping legal terms generalized. This
aspect has also been highlighted by Rahman (2013). In accordance with his viewpoint, trademark
law of UAE had used words that can be moulded as per the situation in order to provide justified
court decisions.
Similar to the international protection, legislation of UAE had made adjustments for the
protection of well-known marks at national level. This fact has been highlighted in Abu Dhabi
Federal Court of Appeal, Case 161/2012, ‘Ibn Battuta’, December 10 2012. In this case, court
had addressed the issue that reliance on expert opinion that reputation within the borders of UAE
is insufficient for rendering a mark well known. This decision was supported by following
statement:
“The fame of an existing trademark will be evaluated by considering mainly two factors.
Primary factor is objective and geographical area. In this aspect, geographical area will be
considered on the basis of usage of way of mark. For example, if usage of mark had crossed
geographic boundaries of several countries and it is also recognised in international market then
it will be considered as renown. This aspect will also be supported by time and historical factors.
Second factor is subjective in nature which states that substantial part of the consumers is aware
from trademark.”
Fed Ct of Appeal, Case 161/2012, ‘Ibn Battuta’
13 A., Rahman, 'Treatment of Geographical Indications (GIs) in the European Union (EU) TRIPS-Plus
Initiatives: Implications for Bangladesh.' WIPO Academy, University of Turin and ITC-ILO-Master of
Laws in IP-Research Papers Collection. 2013.
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December 10 2012
However, in the supplementary report it has been stated by the experts that lack of
evidence with the right holder regarding usage of mark outside the boundaries. In this aspect
legislation had stated that international reputation of a particular trademark is determined on the
basis of use of that trademark outside its national borders not only on its image. By considering
this aspect, reputation of trademarks is determined on the basis of usage regardless of fact that it
is registered or not.
Issue of Trade names vs Trademarks
According to Cottier, Shaheeza and Michelangelo (2014), there are several conflicts in
protection provided through trademark law in UAE because of the separation of trademark
systems and trade names. This issue is not only limited to the UAE, many countries in the Arab
world had similar provisions14. Due to these contradictory provisions there was issue in similarity
in trade mark of well-known five star hotel brands in UAE with the trade name of two star hotels
in Dubai. Similar to this, other contradiction in trade name and trade mark in the country are: BARCLAYS REAL STATE (trade name) in Dubai vs BARCLAYS BANK (trademark) PARIS GALLERY (trade name) in Qatar vs PARIS GALLERY (trademark)
Study of Cottier, Shaheeza and Michelangelo (2014), shows that this problem arises
because, protection through trade names is acquired on the basis of establishment of physical
business presence. On the other hand, in trademark protection is provided by the registration of
mark by owner without their address or presence in the country. Due to this aspect, without
having appropriate cross check of data bases contradiction can easily occur between trade name
registration and trademark registration. In addition to this, it is more difficult to challenge the
name of the business on the basis of rights provided by trade mark law. In this aspect
Michelangelo (2014) had stated that, trademarks are monitored by reviewing periodical
registrations by the gazette which is published in the “opposition period” in order to allow any
individual for the legal interest to oppose the published trademark application prior to its
registration. It is generally an administrative procedure accomplished by trademarks offices. In
14 T., L. Cottier, Shaheeza and T. Michelangelo. 'Use It or Lose It: Assessing the Compatibility of the Paris
Convention and TRIPS Agreement with Respect to Local Working Requirements.” Journal of
International Economic Law.17, no. 2 2014. pp. 437-471.
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this aspect, they have authority to take cancellation action for cancelling the trademark
registration on the basis of facts that it is confusing with the previous mark or name.
Trade names in UAE can be challenged by procedure of trade name deletion case through
the court. However, risk in these cases arises for justified decision because court assesses the
ownership rights on the basis of date of registration in the country where dispute had occurred. In
this aspect, Mitchell and Mariela (2014) had demonstrated the case that if trade name owner in
Qatar existed prior the registration of trade mark in that country then such situation will be in
favour of trade name despite of the fact that trademark is well-known to the public and it has a
substantial impact. This factor is not justified various case situations15. However, trade name
cancellation requires a complete law suit which is time and cost consuming. Study of Mitchell
and Mariela (2014), shows that there are various cases that shows successful example for the
name changes by administrative route in UAE.
Recently, government of Abu Dhabi had issued new regulation for the trade names with
the title “Administrative decision No 7 for the year 2014 Regulating trade names in the Emirates
of Abu Dhabi”. It is a federal union developed for the governance of both local and federal
legislation. Court decision under this law addresses the existing conflicts between trade name
and trademarks in the country as it is a weak loop of the legal regime because these two
databases are never cross checked in a proper way. For a long period of time, original owners of
trademarks were facing issue of similarity of their marks with the trade names. In addition to
this, if trade names are not published then they do not have opportunity for infringement prior to
the registration. This issue has been resolved by this new legislation according to which
registration of trade names are prohibited which are similar to the existing national and
international registered trademarks.
On this law, Mitchell and Mariela (2014) had stated that this decision of court will
provide protection to both registered and well-known marks for the prevention of registration of
similar marks until and unless authorization is provided by the original owner. Legal scholar
O'Connor (2015), had stated that regulatory authorities of UAE is continuously making
modifications in their legal regimes in order to resolve previous issues and loop holes in legal
15 A. D. Mitchell, and M. Mariela, 'Plain Packaging in Australia: Implications for Trademark Rights Under
the TRIPS Agreement and the Paris Convention.' Palestra 2014 pp. 295-303.
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systems. Furthermore, this legislation had set ideal example for other countries to adopt this
approach towards conflicts of trademarks and trade names in order to strengthen their protection
system for the intellectual property16.
Paris convention (1883)
Paris convention 1883 was developed for the objective of protection of entire industry in
the countries in which this convention will be applied. UAE was covered in the list of parties
involved in Paris convention for the adoption of the one of the widest treaties in the world.
Substantive provisions under this convention are mainly segregated into three categories i.e.
national treatment, priority rights and common rules17. In accordance with the Paris Notification
No. 173, UAE had accepted the membership of union on September 19, 1996 when this
convention was revised with respect to their legislation.
In accordance with the Article 2 and 3 of this treaty, natural and juristic individuals are
entitled to avail benefit of trademark protection in foreign countries also which are cited as a
member of the convention. In addition to this, if right of intellectual property are granted to the
individuals then they are entitled to protection and legal remedy similar to their national
convention18.
Further, article 4 of this treaty deals with the priority rights of the convention. In
accordance with these provisions, applicants are entitled to make use of their first filing date as
effective date while contracting with the other states provided that applicant or their successor
had made subsequent application within 6 months.
In legal regime of UAE, International Classification of Goods and Services is followed in
order to register the trade mark under norms Nice Agreement (10th edition). On the basis of
these provisions, modifications were made under provisions of trademarks legislation with the
16 B., O'Connor, 'The Legal Protection of GIs in TTIP: Is There an Alternative to the CETA Outcome'.
In 145th EAAE Seminar “Intellectual Property Rights for Geographical Indications: What is at Stake in
the TTIP, 2015. pp. 14-15.
17 T.O. Awokuse and W.G., Gu, Does foreign intellectual property rights protection affect US exports and
FDI?. Bulletin of Economic Research, 67(3), 2015 pp.256-264.
18 M. Kyle, and Q. Yi. Intellectual property rights and access to innovation: evidence from TRIPS. No.
w20799. National Bureau of Economic Research, 2014.
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