Today brands are not just names or logos but constitute powerful symbols of quality, trust, and identity. The trademark of a well-known brand gains significant value and recognition. The trademark of a well-known brand carries immense value and recognition and as a result exposed to the heightened risk of infringement and unauthorized exploitation.
To align with global intellectual property standards, the UAE introduced the Federal Trademark Law in 2021, underscoring its commitment to robust IP protection. The UAE is also a signatory to key international treaties including the Madrid Protocol, TRIPS Agreement, Berne Convention, Paris Convention, and the Patent Cooperation Treaty, reinforcing its dedication to safeguarding intellectual property rights.
Defining Well-Known Trademarks
Under UAE law, a trademark is deemed ‘well-known’ based on several criteria. These include the extent of its recognition by the relevant public, duration of registration, extent of use, global presence, commercial value, and its role in distinguishing associated goods or services. These factors collectively determine the level of recognition and protection afforded to the trademark.
Protection of Well-Known Trademark
A well-known trademark with international recognition cannot be registered in the UAE without the owner’s consent, particularly for goods or services identical or similar to those it distinguishes. This stringent protection extends to barring registration for marks that mimic, translate, or adapt a well-known trademark, ensuring that its integrity and distinctiveness are preserved.
Moreover, registration will be refused for goods or services that, while not identical or similar, would suggest a connection between them and the goods or services associated with the owner of the well-known trademark. Registration will also be denied if it is deemed detrimental to the interests of the well-known trademark owner. These provisions aim to protect the integrity and reputation of well-known trademarks in the UAE, ensuring they are not diluted or misused in a manner that could confuse the relevant public.
Recourse Available
Before Registration
Prior to registration, trademarks must be published in the Ministry of Economy’s bulletin. Owners of well-known trademarks have 30 days from the date of publication to file an objection with the Ministry against the registration of an infringing trademark. Once an objection is filed, the applicant will be notified and given 30 days to respond; failing which, the application will be considered as assigned. In case of contested cases, the Ministry shall hear both parties, consider the evidence and render a reasoned decision.
After Registration
Once registered, the trademark shall enjoy exclusive ownership that cannot be disputed if the trademark has enjoyed protection for a continuous period of 5 years from its registration Despite this, owners of well-known trademarks can seek cancellation of infringing registrations within the initial 5-year period or beyond by demonstrating malicious intent. Decisions on cancellation applications are typically issued within 90 days, tailored to individual case circumstances. Additionally, owners can seek compensation for damages incurred due to infringement.
Appeal Process
Appeals concerning rejection, suspension, or cancellation of trademark registrations can be made to the Grievance Committee within 30 days of notification. Further appeals can be lodged with the Court of Appeal within 30 days of the Committee’s decision, ensuring a fair and thorough review process.
Navigating trademark infringement, whether imminent or actual, in the UAE requires a meticulous and strategic approach to effectively utilize available legal avenues. Safeguarding your brand’s integrity, market position, and consumer trust in a competitive global marketplace hinge on expertly leveraging these protections. With an in-depth understanding of the UAE’s legal framework, our team of legal experts provides strategic counsel that empowers businesses to innovate and confidently expand their brands, ensuring protection against unauthorized use and infringement.
