Trademarks

Our expertise in Trademark covers all aspects relating to Trademark Registration , Licensing and, including Trademark Infringement.

Trademarks are essential and vital assets to any businesses that officially permit the identification and value of ones products  and           services vis-à-vis from other competitors.

In UAE, trademark protection can be obtained only through local application at UAE Trademark Office,

We assist our clients in the defining and implementing a global protection strategy of their trademarks, coordinate adequate searches, and conduct the actions necessary to protect and defend their rights.

We represent them during prosecution of trademark applications before the UAE Trademark Office and also to represent and assist our clients in opposition proceedings.

We provide advice to our clients in the management of trademark portfolios and assist them in drafting and negotiating trademark transfer and license agreements.

We assess the quality of their protection particularly in the framework of audits  (due diligence) on the occasion of mergers and acquisitions.

We analyse the policy and strategy of their competitors and, if necessary, coordinate and implement the measures necessary to obtain the freedom to operate.

 

Filing Requirements
Trademark/Service Mark/ Collective Mark Applications

1. A Power of Attorney duly notarized & legalized up to the Consulate of the UAE. (Late submission of the POA is applicable within 60 days as from the filing date).

2. Twenty prints of the trademark/service mark. (Size: 6 cm x 6 cm)

3. A certified copy of the home/foreign application registration, if priority is claimed.

The United Arab Emirates (UAE) has been a member of the Paris Convention for the Protection of Industrial Property since September 19, 1996. The International Classification of Goods and Services for the Purpose of the Registration of Marks under the Nice Agreement (10th edition) is followed in the UAE.

Federal Law No. 8 for the year 2002 amended some articles of the Federal Law No. 37 for the year 1992. The law covers the seven Emirates of Abu-Dhabi, Dubai, Sharjah, Ras Al-Khaimah, Ajman, Fujairah and Umm Al-Quwain. A separate application has to be filed with respect to each class of goods or services. A certified translation of the trademark is to be submitted as well.

Once a trademark application is filed, it is examined as to its registrability. Trademark applications accepted by the Registrar are published in the Trademark Journal as well as in two local daily Arabic newspapers and the cuttings of the notices are to be submitted to the Trademark Office. Any interested party may file a notice of opposition to the registration of the mark within 30 days from the date of any publication. The Registrar’s decision concerning the opposition may be appealed to the Committee and the Committee’s decision to the competent court. In the absence of opposition, a trademark is registered and the relative certificate of registration is issued.

According to Decree No. 12 for 2002 issued by the Ministry of Trade and Commerce on February 3, 2002, payment of registration fees should be made within 30 days from the date of expiry of the opposition period or the date of receiving a decision from the Trademark Office regarding an opposition (if any). Based on this, our invoice covering registration charges will be issued at the filing stage in order to attend the payment of the official fees to the Trademark Office.

A trademark registration is valid for 10 years as of the date of filing the application renewable for similar periods. The renewal fees of a trademark registration can be paid during the final year of the protection period.

A grace period of 3 months is allowed for late renewal with a fine. The renewal of a trademark is also published in the Trademark Journal and in two local daily Arabic newspapers. The ownership of a registered trademark can be assigned with or without the goodwill of the commercial enterprise. Unless an assignment has been recorded in the register and published in the Trademark Journal, the assignment shall have no effect vis-à-vis third parties. Changes in the name and/or address of the registrant must be recorded in order to protect rights. Registered user agreements, license and amendments which do not affect the identity of the mark substantially, limitation of the list of goods and/or services covered by a trademark registration can be recorded as well.

Use of a trademark is not compulsory for filing application for registration or for maintaining the registration in force. However, any interested party may request the court to cancel a trademark registration, if the owner fails to use such a trademark in the UAE for 5 consecutive years from the date of registration.

Illegal and/or unauthorized use of a registered trademark by any third party, use of a fake or counterfeit trade/service mark, application to one’s goods a registered trademark belonging to another party in bad faith, dealing in goods bearing a fake or counterfeit trademark, rendering services under a fake or counterfeit service mark, and use of a trademark that falls under certain categories of unregistrable marks are offenses punishable under the law in the UAE.