How to Register a Trademark in UAE
Adv. Drisya Raveendran
Senior Legal Associate
UAE follows a first-to-file system, which means that rights of a registered proprietor prevail over those of a user. Registration of Trademarks in the UAE is governed by the Federal Decree Law 36 of 2021, under the Ministry of Economy. A trademark may be filed either as either a single class application or a multiclass application.
WHAT CAN BE REGISTERED AS A TRADEMARK?
As per Article 2 of Federal Decree Law no. 36 of 2021, anything with a distinctive form, including names, words, signatures, letters, figures, drawings, logos, titles, hallmarks, seals, pictures, engravings, advertisements, packs including unconventional marks such as distinctive smell, sound marks, three-dimensional mark, hologram mark, etc can be registered as a trademark that is capable of distinguishing goods or services of one person from those of others.
WHAT CANNOT BE REGISTERED AS A TRADEMARK?
According to Article 3 of Federal Decree Law no. 36 of 2021, the following cannot be registered as a trademark in the UAE:
- Non distinctive trademarks
- Marks that violate public morals or are contrary to public policy
- Marks similar to symbols or pure religious character
- Public emblems, flags and symbols of the UAE/international organizations or institutions/Other countries or imitations thereof, unless expressly authorized.
- Symbols associated with the Red Cross or red Crescent, or imitations thereof
- Geographical names and data indicating origin/source of goods & services.
- Indications of honorary distinctions, to which a person has no entitlement
- Marks that are likely to deceive the public, or which contain false indications as to the origin or source of goods or services or corresponding characteristics
- 3-D marks consisting of a shape, resulting from the nature of the goods specified in the application or necessary to achieve a technical result without any substantive element that distinguishes it from others
- Translations of well-known marks are prohibited
- National and foreign medals, coins and bank notes
WHO CAN APPLY FOR A TRADEMARK IN UAE?
Any physical or juristic person is eligible to apply for a trademark in the UAE
For Individuals/Entities in UAE:
- A notarized Power of Attorney
- A copy of Commercial Register(In case of Companies or any other body incorporate)
- A copy of the Logo
FOR Individuals/entities outside UAE
- A notarized power of attorney legalized upto the UAE consulate
- A copy of the Logo
- Trademark search: It is crucial that one must conduct a trademark search before applying for registration of a trademark in the UAE. In UAE, much like most of the GCC countries, trademark search is not free of cost and separate official fees of AED 350 per class is applicable. It is pertinent to conduct a trademark search to ensure that your trademark is prima facie distinctive and does not violate or infringe upon any other person/entity’s pre existing rights.
- Filling the application form: The next stage will be to fill the application form, which can be done through the Ministry of Economy's site, as it is the recognized body in charge of overseeing trademark applications. The Application may be filed through the E-services page of the said website. One can just open the website of Ministry of Economy and the homepage would be consisting of various services under the website. The option of "E-services" can be clicked. The Application fee is AED 750.
- Examination: The Ministry of Economy will evaluate the submitted application with a period of 30 days. The applicant will have the opportunity to make changes to the application form from the said website. In formal examination, examination on grounds of absolute refusal and a search for prior trademarks are all parts of the inspection procedure. In case of no objections, the mark would be accepted and ready for publication. In case of any objections, a report would be furnished by the ministry, to which the reply must be filed within 30 days.
- Publications: Once the application is accepted and there is no objection from the trademark office ,the Trademark will be published in the trademark journal for inviting opposition for granting registration to the applied mark . The publication fee is AED 750.
- Opposition: Once published, the trademark may be opposed by any third party within 30 days of publication. If one wishes to file an a opposition, a document consisting of grounds of opposition must be submitted within this time frame by paying a fee of AED 7500. A reply must be filed by the Applicant to the same within 30 days, following which the mark would be rejected or a hearing would be appointed for final disposition of the matter.
- Registration Certificate: If no oppositions are filed against the application, the registration certificate for the trademark in the UAE would be issued by the Ministry of Economy upon payment of requisite registration fees. The registration fee is AED 5000.
- Validity: The registered trademark has a ten-year time frame and can be renewed at the expiry of this period.
- Renewal: Upon expiry of the validity period, the trademark can be renewed every 10 years, by paying the requisite renewal fee. he trademark renewal procedure in the UAE is much similar to the trademark registration procedure. The trademark will be renewed one month after the renewal fee is paid. For the following ten years, the renewal charge would be AED 6500 and AED 7250 within 6 months after end of protection period.
In a straightforward matter with no objections/oppositions, the application would be registered within 4-6 months.
CANCELLATION OF A TRADEMARK REGISTRATION IN THE UAE
If a registered trademark is not used within 5 years after the date of registration, it may be cancelled on that basis.