UAE Intellectual Property Law Updates

By Dennemeyer & Co  

Significant new resolutions in trademark laws, piracy penalties increased

In its endeavor to strengthen its position as an innovation-friendly business hub, the UAE has recently, and in terms of trademark protection, significantly revised its Intellectual Property (IP) laws. These are valid throughout the UAE including Abu Dhabi, Dubai, Ajman, Fujairah, Ras Al Khaimah, Sharjah, and Umm Al Quwain.

We summarize the most notable amendments for rights holders in relation to copyrights, industrial designs, patents. and trademarks below.

Copyrights

On January 2, 2022, the new Federal Decree-Law No. 38/2021 came into force; the Implementing Regulations are yet to follow. The most significant changes are:

• Work made for hire. The common-law concept of granting copyright directly to the employer and not to the creator is introduced, either by contract or de facto, according to the circumstances. Notably, this extends to architectural works as well
• Copyright does not prevail over privacy. Photographs depicting private persons cannot be perused without their consent.
• Establishment of a Grievance Committee for Copyrights & Neighbouring Rights.
• Increase in penalties for violations and infringements to AED 100,000 (US$27,500) and for computer viruses from AED 100,000 to AED 1,000,000. (US$275,000)
• Voluntary withdrawal of works is not possible anymore for software.
• Assignment of future rights: The former limit of just five works has been lifted. The exact new number is expected to be defined in the Regulations, but it will not be an unlimited transfer.

Industrial Designs

On November 30, 2021, the new Federal Decree-Law No. 11/2021 came into force, followed by the Implementing Regulations (Cabinet Resolution No. 6/2022), which were issued on February 10, 2022.  The most significant changes are:

• Designs are new only when not previously disclosed to the public. However, a 12-month grace period applies for pre-filing publications in the UAE.
• The period of protection is increased to 20 years.

Patents

On November 30, 2021, the new Federal Decree-Law No. 11/2021 came into force, followed by the Implementing Regulations (Cabinet Resolution No. 6/2022), which were issued on February 10, 2022.  The most significant changes are:

• A utility certificate can be converted into a patent.
• A 12-month grace period applies for pre-filing publications in the UAE.
• The use of a new combination of two or more patented medicines by a licensed pharmacist is allowed.
• An accelerated examination is introduced.
• Integrated Circuit Layout Designs can be filed. The term of protection is 10 years.

Trademarks

On January 2, 2022, the new Trademark Law (Federal Decree-Law No. 36/2021) came into force, followed by the Implementing Regulations (Cabinet Decision No. 57/2022), which were issued on June 7, 2022. The most significant changes are:

• The UAE joined the Madrid System of the World Intellectual Property Organization, which allows applicants from any of the member states to designate their home trademark registration to up to 128 countries.
• Some non-traditional forms of trademarks have been explicitly mentioned in the new law, such as 3D trademarks, colors, holograms and smells.
• Multi-class applications are now possible according to the law, but the practical implementation of this is still pending.
• The maximum time frame for the examination of trademark applications has been increased from 30 to 90 days.
• Individuals can now apply for trademarks without a trade license.
• The Grievance Committee to appeal Trademark-Office decisions now consists of a judge and two IP experts, thus increasing the competency and trust in the Committee. Moreover, decisions of the Committee can now directly be appealed to the Court of Appeals and no longer the Court of First Instance, removing one instance and thereby making the process faster and less costly.
• Cancellation actions will now have to be filed with the Trademark Office and no longer with the courts.
• Moreover, preliminary measures have been added in the new Trademark Law and can be obtained even ex parte in urgent cases.
• New trademark filings will have to be accompanied by a certified Arabic translation of the non-Arabic parts of the trademark.
• Actions such as new applications, renewals and records of assignments no longer have to be published in two daily newspapers but only in the Official Gazette.
• The grace period for trademark renewals has been extended from three to six months.
• The obligation to record trademark licenses with the Trademark Office has been removed.
• The possibility of temporary trademark protection during exhibitions is now explicitly mentioned in the law.
• The new law provides clearer protection for well-known marks.
• It codifies that trademarks can be cancelled based on prior use by another party.
• It confirms that bad faith registrations can be challenged without a time limit.
• Geographical Indications can now be registered.
• Fines for violations have been drastically increased from a previous maximum of AED 10,000 to AED 1,000,000. (US$275,000)

The new law also includes provisions on customs seizures of infringing items. Exceptions are made for small amounts for personal use and goods offered for trade in the exporting country by the owner of the trademark or with their consent.

While some details will still have to be clarified through the publication of additional regulations and the Ministry of Economy’s practice, it is evident that a number of welcomed and long-awaited steps have been taken to ensure that IP rights are better protected and enforceable.

We are grateful to Jan Wrede and Yasir Massod of Dennemeyer & Associates Dubai for providing this article. For trademark assistance in the UAE please contact dubai@dezshira.com  

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