In September 2015 the Trademark Office beta tested its new online system by allowing several trademark agents to file a limited number of trademark applications and renewals. In addition, the Dubai Department of Economic Development recently seized a record haul of counterfeit goods over a 26-hour period. Body
The Ministry of Economy recently announced a substantial increase in official fees at the Trademark, Patent and Copyright Offices. The official fees for the registration of a trademark in the United Arab Emirates are set to double. As a result, the total charges for registering a trademark in the United Arab Emirates (excluding trademark agents' fees) will amount to Dh12,550 (approximately $3,450).
The United Arab Emirates has long been an attractive market for IP owners, due its flexible IP laws. However, the Competition Law has started to change this relatively relaxed regime. While the law provides exemptions, IP owners will need to consider whether their agreements fall under its scope and, if so, whether an exemption applies or whether an application for an exemption should be made to avoid fines.
Effective as of November 1 2014, the UAE Patent Office has changed its practice in relation to the payment of official fees for the substantive examination of patent applications. This change potentially heralds a significant shift in the UAE Patent Office's examination policy – moving forward, applications may be subject to substantive examination much more quickly than has previously been the case.
A recent case in which a man was charged and jailed, pending trial, for recording a short video of a friend and his family and posting the video on Instagram has drawn attention to the importance of IP and privacy rights. As social media becomes an integral part of businesses' marketing strategies, steps should be taken to ensure that the employees that are 'speaking' on behalf of the business are adequately trained on the potential risks.
Following the Federal National Council's approval of the draft UAE Anti-commercial Fraud Law, further amendments have been made to the draft law as it progresses towards enactment. These amendments include new rules on the re-export of infringing goods, protection against similar trademarks, the law's applicability in free zones and counterfeit services.
The UAE Trademarks Office has announced a significant change in practice which takes effect as from May 1 2014. Under this new practice, all trademark applications, renewals, recordals, oppositions and other actions filed with the Trademarks Office must be accompanied by a fully notarised and legalised power of attorney upon filing.
There are a significant number of English speakers within the Middle East, particularly in countries such as the United Arab Emirates where there are large expatriate communities. However, the first language of the region is Arabic. Foreign brand owners looking to register a mark in such countries should consider the importance of registering Arabic versions of their trademarks in order to achieve sufficient protection.
The 10th edition of the Nice Classification of goods and services recently came into force, providing a significant advantage for trademark owners filing trademark applications in countries that have adopted the classification. However, in the Middle East, where most countries are not signatories to the Nice Agreement, the position has become more complicated than it was previously.
The UAE Trademarks Office (TMO) has recently appointed a new official to decide opposition cases. This is welcome news. However, those unfamiliar with opposition proceedings in the United Arab Emirates may find the absence of a regulated structure difficult to negotiate. Many procedures originate from the customary practice of the TMO, rather than from a clearly defined legislative framework.
As internationalized (non-Latin script) domain names (IDNs) are being adopted across the Arabic-speaking world, many brand owners are having to review their Arabic-language trademark protection. While there may be a well-trodden path to follow in seeking to recover English and other Latin-script domain names from cybersquatters, the position is potentially much less straightforward when it comes to Arabic-language IDNs.
The United Arab Emirates has reintroduced a two-stage process for trademark applicants to pay publication and registration fees. However, a strict publication deadline has also been introduced. If publication does not now take place within 30 days of payment of publication fees, the application will lapse. This deadline is not extendable and there is no provision for applications to be restored if the deadline is missed in error.
The UAE government has announced proposals to introduce major amendments to the IP regime. The proposed changes will have an impact across three areas: confidential information, patent and design protection and integrated circuits. The introduction of the proposed amendments is positive news for rights owners, but much will depend on the implementing regulations.
Broadly speaking, a patent application comprises an abstract, the patent specification and the claims. This update provides some basic background on these component parts, along with more specific details relating to UAE practice for patent applications.
In order to control the use and licensing of copyright-protected works in the digital context, owners of such protected works often adopt technological measures such as encryption. These technological measures provide safeguards against the unauthorized use of the works and the removal or alteration of rights management information used for the management of protected copyright.
The UAE government has adopted IP measures in line with international best practice. The focus of these measures has been the provision of a platform for companies and private individuals to do business with confidence. However, government ministries and agencies at both federal and emirate level must also be mindful of the need to protect government intellectual property.
In a recent case the plaintiff owned a valid registration for the trademark SOVEREIGN to distinguish tobacco, cigarettes and related goods. The defendant's suspect container was filled with approximately 50 cases of cigarettes bearing the SOVEREIGN SUPREME CLASSIC trademark. The plaintiff alleged trademark infringement and sought monetary damages and an order for the destruction of the counterfeit goods.
The Dubai Department of Economic Development and the Dubai Silicon Oasis Authority have taken a momentous step towards unifying trade name registration by signing a trade licensing agreement to secure cooperation. This unified approach should bring about a more efficient process and in turn benefit companies that wish to protect an essential component of their assets (ie, their trade name).
Ambiguity concerning whether licensee use of a trademark will be adequate to keep the trademark registration alive and to constitute evidence of genuine use has been resolved by the Gulf Cooperation Council Trademarks Act. Article 32 of the act stipulates that a "trademark licence is required to be in writing in order to be valid and recording the licence of trademark usage is not mandatory to validate the licence".
Brand owners are discouraged from taking action against counterfeiters if they are unlikely to win damages. However, a small investment in brand protection may provide substantial savings in the long term and help to sustain what should always remain at the forefront of any brand owner’s mind: brand equity.