What You Should Know About The New UAE Trademark Law

To commemorate the 50th anniversary of the UAE’s founding, the UAE government introduced 50 new laws in late 2021. The long-awaited UAE Trademarks Law, Federal Trademarks Law No. 36 of 2021, was one of these new laws (the “New Law”). This comes on the heels of the UAE’s ratification of the Madrid Protocol, which took effect on December 28, 2021.

Since the release of The Gulf Cooperation Council (GCC) Trade Mark Law in 2014, the UAE has been expecting an amended trademarks law. The New Law contains a number of provisions from the GCC Trademarks Law, but introduces certain local aspects.

New UAE trademark Law’s provision

The following is a summary of the New Law’s provisions:

• • Broadened the definition of a trademark to make it possible for the registration of additional non-traditional forms of trademarks;
  • Raises the monetary and incarceration sanctions for trademark infringement;
  • The publication for trademarks registrations, renewals, recordals and amendments procedures will be now limited only to the official gazette which is published twice a month; In the future, applicants will just need to publish in the official gazette;
  • Sets provisions for actions (similar to an injunction) to prevent impending infringement, including the authority to seize evidence as well as products and manufacturing machinery;
  • Removes the mandatory requirement to record trademark licences;
  • Enhances the protection given to well-known trademarks;
  • Makes provision for the partial or complete cancellation of trademarks (a formerly confusing issue);
  • Sets provision for collective marks (in addition to monitoring and inspection marks);
  • Sets provisions for the protection of geographic indications marks; and

The amendments are mostly beneficial to rights holders, as they explain some of the “unknowns” in the previous legislation and establish new rights and ideas such as Geographical Indications and Collective Marks, which are common in many other jurisdictions.

Parallel imports continue to have disadvantages, despite the New Law allowing parallel imports from nations where the items are put on the market by the brand owner. This might indicate that if things are imported from nations where they are not publicly offered, the parallel importation of such products could be banned. This is something to consider.

While the New Law and the GCC Trademarks Law both allow for multi-class filings, we expect the UAE will follow the lead of the other GCC nations and remain a “single class” country.

The new UAE Trademark Law has been applicable from 27/2/2022.