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Karawani Law Firm
Dubai, United Arab Emirates (AE)

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United Arab Emirates (AE)

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09-13-2016 (Newsletter Issue 16/16)
New IP Protection e-Service Implemented
The Dubai Department of Economic Development (DED) launched a new electronic system for recording trademarks and processing complaints against importers and distributors of suspected counterfeits.

The updated e-service replaces the previous procedure that required complaints to be submitted in person, which is expected to minimize paper work and facilitate processing of complaints and notifications relating to proactive inspections conducted by the DED. The portal is accessible via the website www.consumerrights.ae.

Source: www.sabaip.com


03-02-2016 (Newsletter Issue 4/16)
More IPR Courts to be Established
The authorities in UAE will be setting-up dedicated courts to handle intellectual property rights disputes and small claims, as per Ministerial Resolution No. 137 for 2016.

The judicial inspection department will provide specialised training to judges to assist them understand the procedures and technicalities associated with IPR cases. This will result in effectively and efficiently resolving disputes.

An intellectual property court has already been set up at the Abu Dhabi Court of First Instance. Small claims courts, which were earlier created at the Fujairah Court of First Instance, will be established at courts across the country.

Source: JAH & Co. IP, Qatar


03-02-2016 (Newsletter Issue 4/16)
Backlog of Design Applications
The backlog of industrial design applications filed between 2011 and 2013 have finally been brought under consideration of the Ministry of Economy. A circular letter has been issued on February 8, 2016, stating that the department will commence to finalize the backlog of industrial design applications soon.

Accordingly it should be noted that the publication fees should be paid within 60 days from circular or the application will be deemed abandoned.

Source: JAH & Co. IP, Qatar


12-08-2015 (Newsletter Issue 19/15)
Online Trademark Filing/Renewal Services
The Ministry of Economy at the United Arab Emirates announced the launch of an online trademark filing and renewal service by the Department of Trademarks as of December 6, 2015.

The service will assist local agents in UAE in filing new trademarks and renew their applications online.

Source: JAH & Co. IP, Qatar


05-13-2015 (Newsletter Issue 7/15)
Drastic Official Fees Increase
The Cabinet Ministers of UAE has announced that the official fees for a wide range of services provided by the Ministry of Economy including trademarks, patents, copyrights and designs will be increased by virtue of Decision No. 9 of 2015. The said decision will be effective as from May 29, 2015.

The new official fee for filing a trademark application will be 1,000 AED/273 USD (instead of 500 AED/137 USD) in one class. The new publication fee in the Trademark Journal after acceptance will be 1,000 AED/273 USD (instead of 500 AED/137 USD). The new registration fee of a mark or a series of marks in one class will be 10,000 AED/2,725 USD (instead of 5,000 AED/1363 USD). The publication fee in the two local newspapers remains the same.

There is uncertainty about whether this fee increase will be applied retroactively for pending applications.

Source: JAH & Co. IP, Qatar and Karawani Law Firm, United Arab Emirates


04-15-2015 (Newsletter Issue 6/15)
Update on Opposition Proceedings
The Head of the Trademarks Department at the Ministry of Economy in the UAE issued a Decree No. 2 for the year 2015 on February 22, 2015, stating the following:

- IP agents should inform the Trademarks Registry of any updates regarding oppositions; e.g. lack of response, waiver of the opposition, settlement, etc. so they can do what is necessary;
- Samples of the publication should accompany the opposition in order to calculate the opposition period;
- The fees of the hearing of AED250 should be settled in a timely manner;
- All accompanying documents should have certified translation locally;
- After the hearing, a decision will be made immediately;
- All attendees of hearing sessions should be fully acquainted with Arabic language reading and writing;
- The hearing time will be no more than 30 minutes, after which the session will be called off;
- If more documents are requested by the Opposition Committee, the agent should provide the same within three (3) days;

Though all the items mentioned are not new as they constitute the normal and ordinary process of the trademarks oppositions in UAE; however the Trademarks Registrar is impressing on the implementation of all above so as to accelerate the settlement of all pending oppositions .

Any interested party may object the registration of a trademark, and submit the written opposition to the Trademarks Registry, or send it to the Ministry by registered mail within thirty days from the date of last publication. The Trademarks Registry shall notify the registration applicant with a copy of the opposition to his application within fifteen days from the date of receiving such opposition. The registration applicant has to file a written counter statement to such opposition to the Ministry within thirty days from the date of being notified with the opposition. If the counter statement is not received within the prescribed term, the applicant shall be deemed to have abandoned his application. Before deciding the oppositions submitted, the Ministry shall hear the sayings of both parties or the party requesting such hearing. The Ministry shall issue a decision rejecting or accepting the registration. It may determine whatever limitations or conditions deemed fit in the latter case. Any interested party may petition before the Committee against the Ministry’s decision within fifteen days from the date of being notified therewith. He may appeal against the Committee’s decision before the concerned civil court within thirty days from the date of being notified with the decision. It shall not entail appeal of a decision of accepting the trademark registration that the registration procedures should be stopped unless the concerned court decides otherwise.

Source: JAH & Co. IP, Qatar


06-10-2014 (Newsletter Issue 9/14)
Trademark Examination Procedures Changed
The Trademark Office in the United Arab Emirates recently issued circular n. 3/2014 related to tademark eamination prcedures.

The Trademark Office will cease issuing preliminary examination reports and the examination decisions will only be limited to acceptance, rejection or conditional acceptance. In the past, the UAE Trademarks Office used to issue preliminary examination reports requesting the applicant or his agent to comply with the certain conditions so as to make the application in a proper order and make it ready for final examination which will be stopped as of 1 June 2014.

No grace period will be granted for responding to examination report, whereas it was the practice to give the applicant 10 days to respond to such examination reports.

Trademark applications will be rejected, if their list of goods and services do not comply with Nice classification.

The said amendments entered into force on June 1, 2014.

Source: JAH & Co. IP, Qatar


04-01-2014 (Newsletter Issue 6/14)
Change of Practice of PoA
As of 1st April 2014, the UAE Trademark Office will not accept any new filings without submitting the original Power of Attorney sufficing the legalization requirements including legalization of UAE Ministry of Foreign Affairs. Same regulations will apply for the opposition procedures, knowing that all opposition must be filed within 30 days from the publication date. This will apply as well to any applications with a priority claim with an imminent deadline or opposition cases with deadlines.

However, all other actions such as recordal of change of name or address, assignment and renewal can be filed and official fees thereof paid without submitting the original Power of Attorney sufficing the legalization requirements including legalization of UAE Ministry of Foreign Affairs whilst these actions will not be processed until the submission of the power of attorney executed as required.

Source: JAH & Co. IP, Qatar


03-18-2014 (Newsletter Issue 5/14)
New Procedure for Amending TM Applications
Starting February 2014, the Trademark Office in the UAE will no longer accept any major changes on all trademark applications before the mark is completely registered. Only typographical errors may be corrected provided that they are not closely related to the subject trademark or do not cause the addition or modification of the main elements of the application. Amendment of the trademarks may occur after the mark is registered according to the Trademark Law enforced in the country.

Source: Saba & Co. IP – Head Office, Lebanon


06-14-2013 (Newsletter Issue 9/13)
Filing Cases Online at Court
Dubai Courts have officially launched three innovative online services aimed at saving time and effort, and facilitating the work of litigants.

The services with the name ‘Al-Salfa’ are online registration of cases, access to the archive of case files and pro bono legal advice.

The testing of this service program began on February 1, 2013, and was made available to law firms on an optional basis. Owing to its successful testing, the program became mandatory from June 1st so that all cases presented to the Dubai Courts can be registered online from anywhere in the world.

The second service program allows plaintiffs to access file archives online and print information about their cases, judgments, decisions and other information, without the need to visit the courts to acquire the papers.

A pro bono legal advice program titled ‘Sure’ has further been launched, where volunteering lawyers can offer free legal consultations to litigants. This policy is aimed at boosting confidence in the judiciary and facilitating litigation for the public.

Source: Talal Abu-Ghazaleh Legal, Jordan


04-02-2013 (Newsletter Issue 4/13)
10th Edition of Nice Classification
The UAE Trademark Office has recently shifted its trademark classification system from the 9th edition to the 10th edition of the Nice International Classification for Goods and Services, which entered into force on January 1, 2012 and applies to new applications only.

Source: Saba & Co. IP – Head Office, Lebanon


03-12-2013 (Newsletter Issue 3/13)
New Automatic Search System Implemented by TM Office
The Trademark Office of the United Arab Emirates announced that it has started implementing a new automation search system which will only reveal the identical marks and not the confusingly similar marks.

Source: www.ag-ip-news.com


07-30-2012 (Newsletter Issue 12/12)
Changes in TM Routine
The head of the Trademark Office in the UAE advised that it has been decided to change some stipulations related to the issuance of the final registration certificate of a trademark.

It is been stated that the filing number will become the registration number of the mark. This new change will apply to pending applications as well as new ones.

Source: NJQ & Associates


02-14-2010 (Newsletter Issue 8/10)
Collection of Trademark Fees Changed
Starting from February 14, 2010, the publishing fees for the Trademark Bulletin shall be collected within 30 days from the applicant being notified of accepting the filing of the application. Trademark registration fees shall be collected within 30 days from the elapse of the 30 day opposition period starting from the publication date.

Source: JAH & Co. IP and www.ag-ip-news.com


01-21-2010
Arabic Domain Passes ICANN String Evaluation
On January 21, 2010, the Internet Corporation for Assigned Names and Numbers (ICANN) announced that the United Arab Emirates, Saudi Arabia, Egypt and Russia are the first four countries to meet a specific set of linguistic and technical requirements required under the ICANN’s IDN (Internationalized Domain Name) ccTLD Fast Track String Evaluation.

For more information please click here


Legal basis is the Federal Trademark Law No. 8 for the year 2002 which amended some articles of the Federal Law No. 37 of 1992, last amended September 2001. The United Arab Emirates have one common (Federal) Trademark Law which covers the seven emirates of Dubai, Abu-Dhabi, Sharjah, Ras Al-Kaimah, Ajman, Fujairah and Umm Al-Quwain.
United Arab Emirates is a member of Paris Convention.
Trademark protection is obtained by registration. It can also be acquired by sufficient public recognition.
Nice classifcation, 10th editon
It is possible to claim class heading.
Exceptions: Classes 32 and 33. Trademark protection cannot be achieved for alcoholic beverages. Pork meat in class 29 cannot be registered.
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, emblems, combinations or shades of colours, three-dimensional forms, the three-dimensional form of a good or its packaging and any combination of the mentioned signs.
The following trademark types are registrable: trade marks, service marks, collective marks, certification marks, trade names and titles of establishment.
The trademark application is filed at the Trademark Office electronically at the site of Trademark Office.
A separate application has to be filed for each class.
Tradesmen only may apply for trademarks.
Similar trademarks may be protected together with the main trademark as associated trademarks for the same owner, in case the main elements are similar and the differences irrelevant.
Foreign applicants need a local agent.
As of 1st April 2014, the UAE Trademark Office will not accept any new filings without submitting the original Power of Attorney sufficing the legalization requirements including legalization of UAE Ministry of Foreign Affairs. All PoA executed in foreign countries other than Arab ones need to be translated into Arab language by a local certified translator.
Foreign applicants do not need a domestic trademark registration.
The application process includes a formal examination, an examination of distinctiveness (absolute grounds) and a search for prior trademarks. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use or if there is a foreign registration in countries following substantive examination of trademarks.
The processing time from first filing to registration is approx. 10 to 12 months.
Before registration, the trademark application is published in the Trademark Bulletin as well as in two local daily Arabic newspapers within 30 days from the approval of the publication form, otherwise the application shall be considered cancelled. The cuttings of the notices are to be submitted to the Trademark Office.
The cuttings of the newspapers notices are to be submitted to the Trademark Office.
The publishing fees for the Trademark Bulletin shall be collected within 30 days from the applicant being notified of accepting the filing of the application.
The trademark registration fees shall be collected within 30 days from the elapse of the 30 day opposition period starting from the publication date. Failure to pay the publication and registration fees within the above dates will be subject to a penalty for every month delay.
National:
The opposition period is 30 days from the date of the last publication since a trademark application is published in the Trademarks Journal and two local newspapers in accordance with the Federal Trademark Law. Extension of time is possible to filing oppositions, counterstatements and responding to office actions.
A trademark registration is valid for 10 years from date of application, renewable for periods of 10 years.
The grace period for renewals is 3 months from the expiration date of the trademark.

Further practical details are available in our publication on this topic here
If the trademark has not been effectively used within 5 years from registration, it may be subject to cancellation by any interested party at a competent court.

Further practical details are available in our publication on this topic here
The official fee for filing a trademark application is AED 1,000 in one class. The publication fee in the Trademark Journal after acceptance is AED 1,000 AED. The registration fee of a mark or a series of marks in one class is AED 10,000 with a fee of AED 500 for publication in two local news papers.

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Practical details on licensing procedures, requirements and effectiveness are available in our publication on this topic here.
Search type First class Add. class
Word Mark Search (availability) 380,00 € 280,00 € 
Word Mark Search (identical) 270,00 € 250,00 € 

The Prices above are SMD Group Search Fees
Country Index is a free service of SMD Group. We thank the following law firms for their assistance in updating the information provided.

Country Survey
02-28-2017
JAH & CO. IP, Doha, Qatar  

09-21-2015
JAH & CO. IP, Doha, Qatar  

08-23-2014
JAH & CO. IP, Doha, Qatar  

06-28-2013
JAH & CO. IP, Doha, Qatar  

01-10-2012
JAH & CO. IP, Doha, Qatar  

01-24-2011
Abu-Ghazaleh Intellectual Property UAE, Dubai, United Arab Emirates



Karawani Law Firm






Raed Karawani
2711 Churchill Tower
Business Bay, P.O. Box 334430
Dubai
United Arab Emirates
Tel: +971 4430 4091/92
Fax: +971 4451 7639
info@karawanico.com
www.karawanico.com

We are a full service law firm that operates across the Middle East, with a fully integrated team that is extremely dedicated and efficient to provide clients with high quality legal advice. Our well-versed team includes Lawyers and IP specialist. We are committed to ongoing development and innovation, our expert team stands out for its exceptional responsive service to maintain good client relationship. We invest in all available technology resources to deliver high prompt quality service and a better satisfaction level with clients.

We are members of various professional Association and Organization Such as INTA, ECTA & IBA.

Trade Mark Section, Ministry of Economy and Commerce
P.O. Box 901
Abu Dhabi
The United Arab Emirates
Tel +971 600 522 225
Fax +971 262 600 00
Mail info@economy.ae
www.economy.ae