UAE Intellectual Property LawFederal Decree by Law No. (36) of 2021 Concerning Trademarks

Article (1) For the purpose of applying the provisions of the present Decree-Law, the following words

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Federal Decree-Law No. (36) of 2021 on Trademarks 2 and expressions shall denote the meanings assigned thereto respectively, unless the context requires otherwise: State : The United Arab Emirates. Ministry : The Ministry of Economy. Minister : The Minister of Economy. Grievance Committee : The Trademark Grievance Committee, formed by virtue of the Minister's resolution, pursuant to the provisions of Article (14) of the present Decree-Law. Competent Court : The Federal Court of Appeal. Civil Court : The Federal or Local Court of First Instance, as the case may be. Hologram Mark : A photographic depiction of a visible spectrum used to display a holographic 3D image of the underlying object. The trademark is displayed as either a single view of the sign in which the entire hologram effect appears, or as several views of the hologram from different angles when needed. Collective Trademark : A trademark used to distinguish the goods or services of member entities of a certain organization that has the legal personality. Geographical Indications : Any indicator denoting that a certain commodity has originated in a territory of a member state of the WTO, or otherwise in a region, location or place of such territory, if the type, goodwill or other features of the commodity are essentially attributed to its geographical origin. Register : The Trademark Register Drawing : Any design that involves a range of visuals (any artistic composition). Symbol : Any single visual drawing. Inscriptions : Engraved marks. Photos : Photos of a human being, whether the owner of the project or otherwise.

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Federal Decree-Law No. (36) of 2021 on Trademarks 3 Bulletin of the Ministry : The trademark bulletin issued by the Ministry. Such Bulletin may be published in an electronic format on the Ministry's website.

Article (2) Every object that has a distinctive form, including names, words, signatures, letters, symbols, figures, addresses, stamps, drawings, photos, inscriptions, packaging, figurative elements, shapes, color, set of colors or a combination of such elements, or a sign or a set of signs, including 3D marks, hologram marks or any other mark used or intended to be used to distinguish the commodities or services of a particular organization from the commodities or services of any other organizations, to indicate that a particular service is performed, or to conduct monitoring or inspection of the commodities or services, shall constitute a trademark. Objects related to sound and smell may also be classified as a trademark.

Article (3) The following objects may neither be deemed a trademark or part thereof nor be registered as a trademark: 1. A mark that is lacking any distinctive feature or made up of details that are merely the designation commonly given to commodities and services, familiar drawings or normal images of commodities and services. 2. Expressions, drawings or marks offending public morals or the public order. 3. Public logos, flags, military rank insignias, badges of honour, national and foreign accolades, coins, banknotes and any other symbols related to the State or other States or Arab or foreign organizations or an institution thereof or any imitation of any of them. 4. Symbols of the Red Crescent or the Red Cross and other similar symbols and the signs imitating the same. 5. Marks identical or similar to symbols of a religious nature. 6. Geographical names and details if the use thereof would likely cause a confusion as to the source or origin of the underlying commodities or services. 7. A third party's name, surname, photo, logo or nickname, unless he or his heirs approve

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Federal Decree-Law No. (36) of 2021 on Trademarks 4 the use thereof in advance. 8. Details related to honors or scientific degrees whose registration applicant fails to prove that he is legally entitled thereto. 9. Marks that would mislead the public or that include false information about the origin or source of commodities or services or their other features, as well as marks that contain a tradename owned by third parties. 10. Marks owned by natural or legal persons who are prohibited to be dealt with under the legislation in force in the State. 11. A trademark identical or similar to any other trademark that had been lodged or registered by third party for the same commodities or services or for related commodities or services, if the use of the trademark whose registration is applied for would give rise to an impression of a connection between them and other commodities or services of the registered trademark's owner or would affect the latter's interests. 12. The trademark of some commodities or services whose registration would undermine some commodities or services with an already registered trademark; 13. The trademarks that involve copying, imitation, translation, Arabization, or vocal translation of a third party's famous trademark or part thereof, and which are intended to be used for distinguishing commodities or services identical or similar to those distinguished by the famous trademark; 14. The trademarks that involve copying, imitation, translation, Arabization, or vocal translation of a third party's famous trademark or an essential part, and which are intended to be used for distinguishing commodities or services that are not identical or similar to those distinguished by the famous trademark, if such usage would likely indicate a connection between those commodities and services and the famous trademark, and it would be likely, in the event of registration of such a trademark, that such registration could inflict damage upon the interests of the owner of the famous trademark; 15. The trademarks that include the following expressions or phrases: "franchise, franchised, registered, registered drawing , copyright" or any other similar words or expressions;

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Federal Decree-Law No. (36) of 2021 on Trademarks 5 Any 3D trademark consisting of a shape resulting from the nature of the commodities specified in the registration application or required for achieving a technical result, where there are no particular elements that differentiate such shape from other shapes.

Article (4) Registration of the Famous Trademark 1. The famous trademark, whose reputation goes beyond the geographical boundary of the State in which it has been registered and extends to the other Countries, may only be registered for identical commodities or services if an application to this effect is submitted by the owner of such a trademark or if the latter's consent is provided. 2. In order to determine whether the trademark is famous or not, the extent to which the public concerned is aware of such trademark as a result of its promotion, period or registration or usage, the number of countries in which this trademark has been registered or has become famous, or its value or effect on the promotion of the commodities or services distinguished by the famous trademark, shall be taken into consideration; 3. The famous trademarks may not be registered to distinguish commodities or services not identical or similar to those which are distinguished by such trademarks in the following two cases: A. If the use of the trademark indicates a linkage between the commodities or services required to be distinguished and the commodities and services of the owner of the famous trademark; or B. If the use of the trademark would inflict damage upon the interests of the owner of the famous trademark; Chapter Two Trademark Registration and Deregistration

Article (11) Priority Right to Apply for Trademark Registration If the trademark applicant or the successors thereof in title are wishing to have the priority right to apply for registration of the trademark based on a former application filed in a Member State of Paris Convention on Industrial Property, a multilateral international convention to which the State or any Gulf Cooperation Council State is a party or a bilateral agreement to which the State is a party, the applicant shall be required to attach with the application a copy of the former application and a statement indicating the former application's date and number and the State in which it has been submitted, within a 6-month period of the date of the registration application on which the priority right depends. Otherwise, the applicant's right to claim registration priority shall be extinguishe.

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Federal Decree-Law No. (36) of 2021 on Trademarks 8

Article (12) Trademark Registration Controls and Procedures 1. The Ministry may establish the restrictions and amendments required to determine the trademark and to prevent its confusion with any other previously registered trademark or any trademark whose registration has been previously applied for; 2. Should the applicant fail to reply to the Ministry within a 30-day time limit running from the date of being notified of the restrictions or amendments set by the Ministry to determine the trademark and to prevent its confusing with any other trademark, the applicant shall be deemed as having waived the application thereof. 3. The Ministry shall decide on the registration application within a 90-day time limit of the date of the submission thereof, subject to meeting the conditions set out in this Decree Law and the Executive Regulations hereof. 4. Should the Ministry refuse to register the trademark for any reason, or render the registration contingent upon certain restrictions or amendments, it shall notify the applicant or his delegated person in writing of the reasons for its decision, and this notification may be served electronically. 5. The Executive regulations hereof shall determine the other procedures and controls for the registration of trademarks.

Article (13) Grievance Against the Rejection or Suspension of Registration 1. The registration applicant or the trademark owner or his authorized representative may submit to the Grievance Committee a grievance against the Ministry's decision to dismiss or suspend the registration application, within 30 days of the date of receiving the dismissal notice. Further, the applicant may appeal against the Grievance Committee's resolution before the competent court within 30 days of the date of being notified of such resolution. 2. If the registration applicant fails to appeal against the resolution dismissing the application thereof within the time limit set out in the preceding clause or fails to implement the condition upon which the application is contingent within the time limit set out in clause

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Federal Decree-Law No. (36) of 2021 on Trademarks 9 (1) of this article, the applicant shall be deemed as waiving the application. 5. In all cases, the court shall not admit the case seeking revocation of the Ministry decision to dismiss the application for registration or suspending the trademark registration if no grievance has been filed against the same.

Article (14) Grievance Committee 1. A committee called "Trademark Grievance Committee" shall be established at the Ministry under the chairmanship of a competent judge to be nominated by the Minister of Justice, and shall have two experienced members to be appointed by the Minister. This Committee shall be competent to hear the grievances filed by the interested parties against the decisions issued by the Ministry in enforcement of provisions of this Decree-Law and its Executive Regulations and the decisions issued in implementation hereof. 2. The minister shall issue a decision nominating the members of the Trademark Grievance Committee and determining its terms of reference and the procedures for filing the grievances with it.

Article (15) Trademark Announcement 1. Should the Ministry approve the trademark, it shall, prior registering it, announce the trademark on the Ministry's Bulletin at the expenses of the registration applicant, in accordance with the procedure set out in the Executive Regulations of this Decree Law. The announcement shall indicate the deadline for filing any objection to the trademark registration. 2. Each interested party may, within 30 days of the date of publication, to submit an objection to the Ministry against the registration of the trademark in accordance with the procedures and means enshrined in the Executive Regulations hereof.

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Federal Decree-Law No. (36) of 2021 on Trademarks 10

Article (17) Trademark Registration Certificate 1. If the trademark be registered, the legal effect of its registration shall commence of the date of submitting the application. The owner of the trademark shall be given a certificate including the following information: a. The registration number of the trademark. b. Number and date of priority as well as the name of the State in which the application has been submitted, if any. c. Date of submission of the application, date of registration of the trademark and expiry date of the protection. d. The trademark owner's name, surname, place of residence and nationality. e. A certified copy of the mark. f. Details of the goods or services for which the trademark is allocated, and the trademark's category. 2. The owner of a registered trademark shall enjoy the right to prevent any third party, who fails to obtain his consent, from using the trademark or an identical or similar mark thereof, including any geographical indication in trading for distinguishing goods or services connected to those for which the trademark has been registered, whenever such

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Federal Decree-Law No. (36) of 2021 on Trademarks 11 use is likely to create confusion in the minds of the consumers in case the same or similar trademark is used to distinguish goods or services similar to those for which the trademark has been registered.

Article (18) Ownership and Disputed Ownership of Trademark 1. Whoever registers a trademark shall be considered its owner. Ownership of a trademark may not be a matter of dispute whenever it is registered and used for an uninterrupted period of at least five (5) years without being involved in any legal proceedings, unless it is proven that the person who registered the trademark has acted in bad faith. 2. Any person, who has used the trademark earlier than the one in whose name the trademark is registered with the ministry, may apply to the Ministry to have the trademark deregistered within (5) five years of the date of its registration, unless he expressly or implicitly agrees that the trademark be used by the one in whose name it has been registered.

Article (24) Trademark Deregistration 1. The owner of the trademark may apply to the Ministry in order to have the trademark removed from the register, for all or part of the goods or services for which the trademark has been registered. 2. The owner of a well-known trademark, whose reputation exceeds the geographical borders of the country and which is similar to a trademark registered with the Ministry, may apply to the Ministry to have the registered trademark deregistered within (5) five years of the date of its registration, unless it is proven that there is bad faith on the part of the person who has registered the trademark. 3. The interested person may apply to the Ministry to have the trademark that has not been used for (5) five consecutive years deregistered, unless there are emergency circumstances that have prevented the trademark from being used. 4. The Ministry may, either sua sponte or upon a request from the parties concerned, deregister the trademark that has been registered in violation of the provisions of this Decree-Law, or in the cases specified by its Executive Regulations. 5. If the trademark is licensed to be used in accordance with a contract that has been registered or annotated in the trademark register, the Ministry may deregister such trademark at the request of its owner, unless the contract stipulates the consent of the beneficiary on the deregistration, without prejudice to Article (31) hereof.

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Federal Decree-Law No. (36) of 2021 on Trademarks 14 6. The Executive Regulations of this Decree-Law shall determine the conditions, terms, and procedures for submitting the applications referred to in this Article, and the mechanism for deciding thereon. 7. The provisions on grievances and appeals set out in Article (13) hereof shall apply to the Ministry's decision to deregister the trademark or reject the deregistration application.

Article (28) 1. The trademark registration application may be assigned, and the ownership of the registered trademark may be transferred, with or without compensation, pledged or attached together with the commercial premises or venture establishment or the whose goods or services are distinguished by the Trademark, unless otherwise agreed. 2. The ownership of the trademark shall be transferred by way of inheritance, will, gift, or any other legal form. 3. In all cases, the transfer, pledge or attachment of the trademark shall have legal effect vis-à-vis third parties only after the same is recorded in the register and announced to the public by any publication method, in accordance with the procedures and conditions specified by the Executive Regulations of this Decree-Law.

Article (33) Limitations on the License to Use the Trademark Limitations may not be imposed on the beneficiary of the license to use the trademark, where such limitations are not originating from the rights conferred by the registration of the trademark or are not necessary for the maintenance of such rights. Nevertheless, the license agreement may contain the following limitations: 1. Delimitation of the geographical area or the duration of using the Trademark. 2. Requirements for effective quality control of goods or services.

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Federal Decree-Law No. (36) of 2021 on Trademarks 17 3. The obligations imposed on the licensee to refrain from any actions that may result in abuse of the trademark.

Article (35) Collective Trademarks 1. The Executive Regulation of this Decree-Law shall define the conditions and controls for registering and using the collective trademarks. 2. A collective trademark may not be re-registered for the benefit of third parties in the event that it is deregistered in respect of the identical or similar goods or services. 3. The Ministry may, upon the request of the person concerned, deregister a collective trademark if it is convinced that the registered owner is using it alone, that he is using it or allowing it to be used in violation of the conditions specified by the Executive Regulations of this Decree-Law, or that he is using it in a way that is likely to mislead the public in respect of the origin of the goods or any common characteristic of the goods or services for which the collective trademark has been registered.

Article (36) Registration of the Trademark for the Purposes of Control or Inspection 1. The legal persons undertaking the control or inspection of certain goods or services as to their origin, components, manufacturing process, quality, particularity or any other characteristics, may apply to the Ministry to register a trademark belonging to them to serve as an indication of conducting the control and inspection process, in accordance with the conditions and controls specified by the Executive Regulations of this

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Federal Decree-Law No. (36) of 2021 on Trademarks 18 Decree-Law. In all cases, the owner of the registered trademark shall notify the Ministry of any changes in such requirements. 2. The registration of such trademark shall have all the effects stipulated herein. In case the said trademark is deregistered or not renewed, it may not be re-registered in respect of identical or similar goods or services.

Article (44) Provisions Applicability to the Geographical Indications Without prejudice to the provisions of the bilateral and international agreements applicable in the State, the provisions on the trademarks stipulated in this Decree-Law and its Executive Regulations shall apply to the geographical indications pertaining the following: 1. Submission of a registration application. 2. Examination of the registration application and approval or rejection of the application. 3. Objection to registration. 4. Registration Revocation and Deregistration. 5. Transfer, licensed use and attachment of the geographical indication. 6. Compensation for any act of infringement on the rights prescribed in the provisions hereof. Chapter Seven Customs Clearance

Article (45) 1. Subject to the legislations in force in the State, the customs authorities may, either sua sponte or based upon a request of the right holder or his representative, order, under a

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Federal Decree-Law No. (36) of 2021 on Trademarks 21 reasoned decision, to suspend customs release for a maximum period of twenty days of any materials in violation of the provisions hereof. 2. The customs authorities may not prevent the right holder or his representative from examining the materials ordered not to be released by customs. 3. The Executive Regulations of this Decree-Law shall specify the conditions, controls, and procedures related to the inspection and the submission of a request to suspend the customs release and decide thereon.

Article (47) Precautionary Measures Upon Infringement of Rights 1. In the event of an actual or potential infringement of any of the rights established under the provisions hereof, the right holder may apply for a writ on petition from the judge of summary matters at the civil court having jurisdiction over the origin of the dispute, to take one or more appropriate precautionary measures, including the following: a. Conduct a detailed description of the infringement, the goods involved in such infringement, and the materials, tools and equipment used or that may be used. b. Impose attachment over the materials, tools and equipment referred to in the previous paragraph of this Item, and the proceeds resulting from the infringement. c. Prevent the goods, subject matter of the infringement, from entering the commercial channels and preventing their export, including the imported goods after their customs release.

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Federal Decree-Law No. (36) of 2021 on Trademarks 22 d. Preserve any evidence related to the subject matter of the infringement. 2. The judge of summary matters may instruct the petitioner to submit his evidence that suggests that the infringement of the right has already occurred or is about to occur, and may instruct him to provide information that is sufficient to implement the precautionary measure and to identify the relevant goods. 3. The judge of summary matters shall decide on the petition not later than (10) ten days of the date of its submission, with the exception of exceptional cases that he deems appropriate. 4. The judge of summary matters may, when necessary, issue the order, at the request of the petitioner, without summoning the other party, if it is likely that the delay in issuing the order may cause irreparable harm to the plaintiff or if there is a fear that the evidence will be lost or destroyed. In this case, the other party shall be notified of the order without delay and immediately after its issuance. The notification, when necessary, may be made immediately after the order is executed. 5. If the judge of summary matters orders a precautionary measure to be taken without summoning the other party, the defendant may, after being notified of it, file a grievance against it before the president of the court in which the order was issued within (15) fifteen days from the date of his notification. In this case, the court president may confirm, modify or cancel such order. 6. The judge of summary matters may instruct the petitioner to provide an appropriate financial guarantee or a bank guarantee sufficient to protect the defendant from abuse of the right, taking into account that the amount of the guarantee or the bank guarantee shall be reasonable and appropriate. 7. The owner of the right shall have the right to file a lawsuit on the origin of the dispute within (20) twenty days of the date of the issuance of the order to take the precautionary measure, or from the date of his notification of the rejection of the grievance stipulated in Item (5) of this Article, as the case may be, otherwise this order will be cancelled at the request of the defendant.

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Article (49) Without prejudice to any more severe penalty stipulated in any other law, a penalty of imprisonment and/ or a fine of not less than (100,000) one hundred thousand dirhams and not more than (1,000,000) one million dirhams shall be imposed on any person who commits any of the following acts: 1. Counterfeits a trademark that has been registered in accordance with the provisions hereof, or imitates it in a way that misleads the public, whether with regard to the goods or services characterized by the original trademark or those similar to it. 2. Knowingly uses a counterfeited or imitated trademark for commercial purposes. 3. Affixing, in bad faith, on his goods or using in his services a trademark belonging to others. 4. Possesses tools or materials with the intention of using them in imitating or counterfeiting registered or well-known trademarks. 5. Knowingly imports or exporting goods bearing a counterfeited or imitated trademark.

Article (50) Without prejudice to any more severe penalty stipulated in any other law, a penalty of imprisonment not exceeding one year and/ or a fine of not less than (50,000) fifty thousand dirhams and not more than (200,000) two hundred thousand dirhams shall be imposed on any person who: 1. Knowingly sells, offers for sale or trading, or possesses goods for sale purposes, or offers

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Federal Decree-Law No. (36) of 2021 on Trademarks 24 services bearing a counterfeited or imitated trademark or unrightfully affixed or used. 2. Uses an unregistered trademark in the cases stipulated in Article (3) hereof, without any right, on his papers, commercial documents, goods or services, which leads to the belief that the trademark is registered.