The new Amendments to the Federal Trademark Law by the way of Federal Law Decree No. 36 of 2021 repeals Federal Law no. 37 of 1992 and came into effect on 2nd February 2022.
The major amendments to the trademark law include Definition of Trademark, Certain Marks which are barred from registration, classifying, and defining Well-Known Trademark, introduction to Grievance Committee, Severe penalties, and more, with these changes to the law, the Trademark Law become stronger and more effective. Earlier, only companies could register trademarks, but this new law allows individuals to register trademarks. Furthermore, it is no longer compulsory to record trademark licenses at the Trademarks Office (TMO) registry.
Key Changes in the New Trademark Laws
1. Definition of Trademark
The definition of trademark has been expanded in the new trademark law and became more extensive, which now also includes non-conventional trademarks like Three-Dimensional (3D) Trademarks, single color, hologram, sound, smell, etc. After the amendment Sound-marks can also be registered as standalone rights, whereas, in the Old Trademark Law sound-marks were only capable of registration as part of a trademark. This is the latest development that shows the UAE’s willingness to recognize the new cutting-edge technology and new types of Intellectual Property.
2. Marks Barred from Registration
The amendment to the trademark law expanded the list of marks that are barred to register under the law. The list of barred marks under the new law and old law are almost identical, whereas it now also includes identical trademarks, similar, imitation, translation, phonetic translation, or adaptions of earlier trademarks or renowned trademarks. Additionally, the new law exclusively prevents the registration of 3D trademarks that are shaped like the products registered or the basic functional shape.
3. Renowned Trademarks
The new amendment also introduced the concept of renowned trademarks by the way of defining and setting certain criteria, so the trademark falls under the below-mentioned criteria are categorized as Renowned Trademarks: i. The popularity of the product in public resulted from the promotional efforts. ii. The period of its registration and its use. iii. The number of countries in which the product is registered and marked as renowned. iv. The value of the product. v. The degree of its impact on the promotion of goods that used the popular trademark to distinguish them.
4. Grievances Committee
The new amendment to the Trademark Law also introduced the establishment of a Grievance Committee in the Ministry of Economy. The Committee will be headed by 2 (two) specialized members appointed by the Minister of Economy and an exclusive judge appointed by the Minister of Justice. The major role of the Grievance Committee will be to address all the objections related to decisions taken by the Trademark office in relation to the oppositions, applications, and cancellations. The Judge of the Grievance Committee will preside over all the committee’s matter or other related matters.
5. Customs Seizures
Under the new amendment to the Trademark Law, there is specific provision which regulates the custom seizures. Under the new amendment, the custom department may stop a shipment’s clearance for 20 days, if there is any violation of the terms of the law. However, there are certain exceptions to it, which are mentioned below: i. Less quantity of non-commercial goods that individuals carry as hand baggage or shipped in small pieces. ii. Goods intended for trading in the export country’s market by the trademark’s owner or with his permission.
6. Penalties for Trademark Infringement
Under the new amendment of Trademark Law, the penalties of infringement of Trademark have been raised to a very high amount, which will result in fewer cases of trademark infringement. The new penalties for the below-mentioned crimes are raised from AED 100,000/- to AED 1,000,000/-
- Used a trademark owned by others (in bad faith)
- Possession of material for duplication
- Imitation of a registered trademark
- Willingly importing/exporting counterfeit products
However, the minimum penalty in any case of infringement of Trademark law has been set to AED 20,000/- which was AED 5,000/- as per the old law.
The amendment to the Trademark Law is a significant move to enhance the protection of the registered trademarks and recognition of the new cutting-edge technology by registering them under the new Law.