- The UAE has formally approved extensive legal reforms, which include major changes in the IP space
- Article 2 of the revised trademark law expands the definition of a ‘trademark’ to include a wider range of unconventional marks
- A major change is the move to multi-class trademark filings
Introduction
The United Arab Emirates (UAE) has formally approved some of the most extensive legal reforms ever seen in the country.
These include major changes in the IP space, including an expansion of trademark laws, revisions to patent laws, stronger copyright rules and a greater protection of personal data. These major reforms are part of a series of 40 laws which include updates to existing laws and the introduction of new legislation.
The UAE has firmly cemented itself as a global hub over the last few decades and is taking the natural steps to ensure the diversity and modernisation of its economy. The government has enacted this series of laws in order to move towards an innovation and knowledge-based economy. There is a growing awareness of the importance of intellectual property as the backbone to these types of economies.
Amendments to the trademark law
Article 2 of the revised trademark law expands the definition of a ‘trademark’ to include a wider range of unconventional marks, including engravings, shapes, three-dimensional marks, holograms, sounds and smells. This range of unconventional marks will be useful for brand owners operating in the UAE.
The definition is set out by way of a series of examples, which provide useful guidance in understanding what these unconventional trademarks include. Arguably, Article 2 may need further review in the future and, rather than provide examples of unconventional marks, it may be better to expand the principles around what an unconventional mark is to leave the door open to the inclusion of additional marks in the future.
Major changes
A major change is the move to multi-class trademark filings, as previously the UAE was a single-class jurisdiction. This is expected to reduce costs.
Another significant change involves licence agreements. It is no longer required to record the licence at the UAE Trademark Office and, therefore, trademarks owners can now enforce unrecorded trademark licences. This will prove particularly useful when trademark owners are required to prove use of a trademark.
It is also now possible to record an assignment against a pending trademark application. Previously, this could only be done against registered marks.
Cancellation actions for non-use will first be directed to the Ministry of Economy, as opposed to the courts.
Provisions have also been included in relation to geographic indications, which were absent from the earlier law.
Changes to come
Another significant change is the establishment of the new Grievance Committee. This Committee will be headed by a judge and consist of two local IP experts. This is an important shift as it brings together, into one committee, technical IP knowledge and the expertise of the judiciary. The decisions from this committee will be appealable only to the Court of Appeal, and no longer to the Court of First Instance.
The changes came into effect on 2 January 2022 and will have a significant impact on brand owners as the UAE moves closer towards an innovation and knowledge-based economy.
