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Amendments to Trademark Laws

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Aug 25, 2022 (Newsletter Issue 12/22)
United Arab Emirates
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Executive Regulation of New Trademark Law in Force


On 15 June 2022, Cabinet of Ministers Resolution No. (57) of 2022 on the Executive Regulations of Federal Law No. (36) of 2021 on the new Trademark Law (New Law) was published in the Official Gazette No. 729/52. The Executive Regulation (Regulation) includes 27 Articles and replaces all previous or conflicting legal provisions. It entered into force on 16 June 2022.

Some amendments are the following:

Multi-class application: Multi-class applications can now be filed.

Power of Attorney (PoA): Original legalized PoA (translated into Arabic) is required when filing a trademark application. According to current practice, the simply signed POA may be used if the legalized and certified PoA is submitted within 30 days after filing the application.

Non-traditional trademarks: They can now be registered such as 3D trademarks, single color, holograms, sound, and smell. MP3 files and musical notes shall be submitted for voice marks, and chemical formula illustrations are required for smell marks.

Appeals: The time limit for appealing the Trademark Office's decision on opposition to the Trademark Committee was extended from 15 to 30 days.

Publication in Official Gazette: The publication of the accepted trademark application, renewal and cancellation shall take place in the Official Gazette of the Ministry.

Grace Period for trademark renewals: The renewal grace period for trademarks is extended from 3 to 6 months after expiration.

Cancellation Action: Cancellation action of a trademark shall be filed with the Trademark Committee of the Ministry of Economy, as opposed to the courts. The Ministry is the competent authority for the cancellation requests. A time frame of 90 days is specified for the issuance of a decision by the Ministry of Trademarks from the date of filing the complaint.

Trademark License: Filing a trademark license is possible for any person or entity. The recordal of a license is not any more required. However, the Regulation stipulates in Article 18 (1) some conditions for the license agreement which shall be executed in writing and duly notarized, legalized and translated into Arabic in case it is executed in another language.

Geographical Indications (Gis): GIs can now be registered. GIs enjoy protection under the New Law as long as they are protected in the country of origin. If GIs lead to confusion with a trademark application or with a trademark that has been used in good faith in the country, they cannot be registered.

Customs seizures: The New Law follows the GCC Trademark Law and regulates customs seizures. Article 24 of the Regulation sets out the procedures to be initiated by the trademark owner to stop the customs release of counterfeit or forged goods or goods bearing a similar mark to his registered trademark.

International Registrations: The Madrid Protocol's executive regulations and amendments shall apply to international registration applications submitted in accordance with the Madrid protocol regarding international Trademark registration.

For more information, please see here and here.

Source: www.moec.gov.ae; www.utmps.com