Trademarks are extremely significant and valuable intangible assets as they distinguish your products and/or services from those of your competitors. The purpose of this article is to outline key questions for trademark registration in the UAE.
This article, however, is not intended to provide legal advice or opinion, and it is for informational purposes only. If you would like to discuss how this information relates to your particular matter, we encourage you to contact an Intellectual Property lawyer through Legalintro.
Is trademark registration mandatory?
Trademark registration is not compulsory but highly recommended since a registered trademark offers its owner more legal protection than the one that is unregistered. Using a trademark without formal registration in the UAE does not provide sufficient legal grounds to defend the such intangible asset. Bear in mind that without a registered trademark, it is possible for people and businesses to successfully conduct business under your trademark in the local market by eliminating any brand distinction.
Why should I register a trademark?
A trademark ensures the exclusive right of its owner to use it when identifying products and/or services. Registration is deemed as a direct evidence of your ownership and thereby enables you to protect your asset, if someone challenge it. In other words, in case of a dispute, the registered owner does not have to prove his ownership as the onus will be on the challenger. Furthermore, a registered trademark increases the value of your company and fetches a higher sale price for your business when selling it.
What can be registered as a trademark?
You can register a trademark for any combination of words, names and/or symbols that identify or your products or services. A word, phrase, signature, drawing, symbol, hallmark, stamp, vignette, logo, picture and/or aspect of packaging that is unique to your organization can be registered as a trademark. In addition to these conventional trademarks, there are also nontraditional trademarks existing and accepted under the Federal Law No. (37) of 1992 on Trademarks (“Trademark Law”), which is usually difficult to register, such as sounds, scents, tastes or textures.
What is the difference between a trademark and a trade name?
Although trade names can be associated with trademarks, there is a clear distinction between them. A trade name is the legal name of a company under which it conducts its business, while a trademark is one of the forms of intellectual property and used to protect brand name. An important reason to distinguish between trade names and trademarks is that if a business starts to use its trade name to identify its products and services without registering a trademark, it could infringe on existing registered trademarks. Also, since there is no cross-checking between the Commercial Registry, where trade names are registered and the Trademarks Registry, where trademarks are registered, there is another possibility of infringement as a third party may register a trade name that is identical to a registered trademark which belongs to another person or business.
How can I register a trademark?
The Trademark Section of the Ministry of Economy and Commerce is responsible for trademark registration in the UAE. Individuals or businesses willing to use a mark to distinguish their goods, products or services may approach the Ministry of Economy to register their trademark, which will be valid for all the seven emirates. The application has strict document requirements and timelines. Upon acceptance of the Ministry, the trademark registration should be published in two newspapers. The announcement will allow third parties to object to such registration within thirty days from the date of publication. Talk to an expert who can help you register your trademark as quickly as today.
Does registration in the UAE protect my rights in another country?
Since trademark protection is regional, intellectual property rights registered with a trademark certificate in the UAE will not be protected outside the UAE. Therefore, it is wise to register your trademark in the foreign country where you wish to conduct business. Trademark owners doing business internationally should adequately utilize their trademark rights to maintain or increase the reputation and value of their mark and protect those rights in the jurisdiction where the trademark will be used.
What if I need to register my trademark in several countries?
If your products and/or services are to be sold in the several foreign countries, you may, rather than filing for each country separately, file for international protection under the Madrid Protocol. The Madrid System provides for a centralized filing system that allows trademark owners in member countries to register their trademarks in multiple jurisdictions by filing a single application with their national trademark office, for a single fee. However, there is no true international trademark registration covering all jurisdictions over the world, although this term is frequently applied to registrations obtained through the Madrid Agreement or the Madrid Protocol. Qualified Trademark lawyers on our platform can file and prosecute trade mark applications across the globe.
How long does a trademark registration last in the UAE?
Under the Trademark Law, the period of protection provided by the registration of a trademark is ten years. However, the registration can be renewed for a subsequent period of ten years by submitting an application within the last year of the protection period in accordance with the regulations set by the Trademark Law. Failing to do so can cause you to lose your intellectual property rights. Speak with a lawyer who can assist you in the renewal process.
What if my trademark was already registered by a third party in the UAE?
When it comes to the ownership of a trademark, the decision point is that the party who applies for and secures registration of a trademark shall be the exclusive owner of that trademark in respect of the goods and services. However, an international company willing to register its international trademark in the UAE may find its trademark already registered by a local company. In this situation, such international company should approach courts in order to obtain a judgment to remove the registered trademark from the Ministry’s data base on the grounds that a third party has the right to prove his priority of using a trademark under the Trademark Law. The burden of proof however lies on such international company to prove that they have been using the trademark internationally prior to the local company.