Non-Conventional Trademarks Registration in UAE

In the United Arab Emirates (UAE), the Federal Decree Law No. (36) of 2021, also known as the "Federal Law on the Protection of Intellectual Property Rights" is an important reform in the field of intellectual property rights. The law was passed in 2021 and it provides a comprehensive framework for the protection and enforcement of intellectual property rights in the country. This law allows for the registration of non-conventional trademarks, such as the shape of goods, packaging, colours, sounds, smells, and holograms, as long as they are capable of distinguishing the goods or services of one person from those of others and they can be graphically represented. Registering one’s trademark in classes that are irrelevant to their goods or services may be both costly and unnecessary. Therefore, picking the appropriate class is a crucial decision for necessary protection and to avoid unnecessary expenditure.

It is also worth mentioning that non-conventional trademarks are subject to the same conditions as traditional trademarks, such as not being identical or similar to an existing trademark, not being deceptive or misleading, and not being contrary to public order or morality.

TYPES OF TRADEMARKS

The whole system of trademarks is split into two kinds, conventional trademarks and non-conventional trademarks. Marks, icons, words, slogans, or a combination of these are traditionally considered the subject matter of a trade mark application. These are known as conventional trademarks as they are expressly protected and are recognized as such by the general public.

Whereas a non-traditional trademark/non-conventional trademark is any new type of trademark that does not fall into a pre-existing, conventional, or routine trade mark category and is comparatively difficult to register. Colours, motions, sounds, scents, and shapes, among other unusual and interesting requisitions, are examples of non-conventional trademarks. Non-conventional trademarks require special categories and supplementary conditions to be registered in addition to the standard procedure and requirements.

NON-CONVENTIONAL TRADEMARK

Non-traditional trademarks can thus be visible signs (for example, colours, shapes, moving images, holograms, and positions) or non-visible signs (e.g. sounds, scents, tastes and textures). They are shape marks, collective trademarks, colour marks, motion service marks, sound marks, scent marks, taste marks etc.

One example of a famous case involving a non-conventional trademark is the case of Tiffany and Co. v. Costco Wholesale Corp, (2nd Cir. 2019) where luxury jeweller Tiffany & Co. sued Costco for selling diamond engagement rings under the name "Tiffany" in its stores. Tiffany & Co. has used the name "Tiffany" as a trademark for its diamond engagement rings and other jewellery products for many years. The court found that Costco had infringed on Tiffany's trademark by using the name "Tiffany" to sell engagement rings that were not made by Tiffany & Co. The court also held that Tiffany's trademark in the name "Tiffany" had acquired a secondary meaning, meaning that the name had come to be associated with the company and its products in the minds of consumers. This case is a good example of how a luxury brand can protect its non-conventional trademark by showing that it has acquired a secondary meaning and is being used to identify a single source of the product.

However, it is worth noting that the registration and protection of non-conventional trademarks is a relatively new concept in the UAE and many other countries.

UAE AND NON-CONVENTIONAL TRADEMARK

The largest legislative reform in the UAE's history was announced on Saturday, November 27, 2021. These changes included over forty laws covering a wide range of topics, with either amendment to existing laws or the introduction of new laws. The reforms, announced in the 'Year of the 50th' following the UAE's formation in 1971, aim to strengthen economic, investment, and commercial opportunities in the UAE, as well as to improve the rights of individuals and entities in the UAE.

In UAE, the Ministry of Economy is the authority of law which governs the Trademark Office and the primary law regulating trademarks in UAE is the Federal Law on Trade Marks (No. 36 of 2021), as amended (herein, the "Trade Mark Law").

The United Arab Emirates (UAE) has undergone several trademark law reforms in recent years to improve the legal framework for the protection of intellectual property rights in the country.

One of the most significant reforms was the adoption of Federal Decree Law No. (7) of 2018, which replaced the previous trademark law, Federal Law No. 37 of 1992. The new law introduced several changes to the trademark registration process, including the simplification of the application process, the introduction of a new opposition system, and the inclusion of new types of marks, such as non-conventional trademarks.

Another important reform was the establishment of the National Intellectual Property Office (NIPO), which was created under Federal Decree Law No. (7) of 2018. The NIPO is responsible for registering and protecting trademarks, patents, designs, and copyrights in the UAE, and it is expected to improve the efficiency and effectiveness of the intellectual property system in the country.

Additionally, the Federal Decree Law No. (36) of 2021 was also an important reform which was passed 2021, which aimed to modernize the intellectual property system in the UAE, it aims to provide better protection for intellectual property rights, and create a more conducive environment for innovation and creativity.

REGISTRATION STEPS IN THE UAE

The process of registering a trademark in the UAE appears to be simple and straightforward at first glance, but it can quickly become complicated. A single blunder in the application process will result in the rejection of the trademark. A trademark registration takes four months in total.

• Trademark Search: The first step in filing a trademark is to determine whether the desired trademark already exists. This can be established by conducting a trademark search. The trademark will refrain from use if it has been identified as being used by another business company. The registration process will begin only when it is found that the required trademark is available.
• Filing the Application Form: To apply for a trademark, the applicant shall first download and complete the application form. This form is accessible via the Ministry of Economy's e-services website. When applying for registration, the following documents are required:

1. Representation of the proposed Trademark Design
2. A Notarized Power of Attorney ( If the application is from a foreign company, it must be legalized up to the UAE Consulate ).
3. Emirates ID / Passport Copy of the Authorized Signatory.
4. A copy of the Trade license.
5. Contact Details of the Applicant

• Payment of application fees: An amount shall be paid as an application fee after all the necessary documents have been gathered. This payment can be made through the e-services platform of the Ministry of Economy. The UAE trademark registration fee is reported to be around AED 5000 (1,10,771.49 Indian Rupee). There shall also be a required fee as additional court fees or a translation fee. In the case, of a Company, StartUp or SMEs, there shall be additional documents required for the application, such as the Incorporation Certificate, StartUp Certificate and MSME Registration Certificate respectively.
• Examination by the ministry: The MOE will review the submission after the payment is made. Any error, such as an incomplete question or an incorrect response, will result in the rejection of that particular trademark application. If the said application is denied, the applicant may file an appeal and then make the necessary changes. If there are no issues with the application, then a trademark clearance will be received within 30 days.
• Official publication in the Gazette: After approval has been received, the Ministry will publish the document in the Official Bulletin and in two local Arabic newspapers. Any third party who wishes to oppose the trademark must do so within thirty days of the application’s release. No opposition after that specified time will be entertained
• Issuance of registration certificate: If no objection to the trademark is filed within the agreed period, the Ministry of Economy will consider the application matured for issuing the certificate of approval. This certificate shall include the registration number, date of filing, company name and owner’s name, trademark, and a list of the goods, products, and services that fall under it. This certificate shall be issued only after the registration payment is made by the applicant.

CONCLUSION

In conclusion, the UAE trademark registration process is a necessary step for businesses and individuals to protect their intellectual property in the UAE. It is a comprehensive process that involves several steps, and it is important to work with a trademark attorney to ensure that the application is filed correctly and all requirements are met.

It is also important to keep in mind that the trademark registration process in the UAE can take several months to complete, and it is advisable to work with a trademark attorney to ensure that the application is filed correctly and to navigate any potential obstacles or any kind of unnecessary cost.