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A guide to enhancing your brand protection in the United Arab Emirates

Brand Trajectory

This guide provides an overview of the aspects to bear in mind when protecting and enforcing trade marks and copyright in the United Arab Emirates (the “UAE”). This guide will be of interest to those who require advice on matters relevant to the UAE, including:

� Protecting trade mark rights and copyright;

� Enforcing trade mark rights and copyright; and/or

� Commercialising trade mark rights and copyright.

This guide should not be used as a substitute for legal advice and no responsibility is taken by the authors in the event that the contents of this guide are relied on without consulting specialist intellectual property legal advice relative to individual circumstances.

Candice Cothill Associate +971 (0)4 309 1011 c.cothill@taylorwessing.com

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ContentsProtecting and Enforcing Trade Mark Rights in the UAE ....2What is a Trade Mark? ..............................................................3Applicable Law and Administering Body ..................................4International Conventions ........................................................4Why Register a Trade Mark? ................................................... 6Categories of Trade Marks ....................................................... 6Case Study ................................................................................. 9Lessons ...................................................................................... 1 1Brand Clearance ....................................................................... 12Securing Registration of a Trade Mark .................................. 13Publication For Opposition Purposes .................................... 17Use of a Trade Mark ................................................................ 18Recording a Trade Mark Licence ............................................ 18Brand Guidelines....................................................................... 19Enforcing a Brand..................................................................... 19Case Study ............................................................................... 20Lessons ...................................................................................... 21Free Zones ............................................................................... 22Protecting and Enforcing Copyright in the UAE ............23What is Copyright? ................................................................. 24Which Works Qualify for Copyright Protection Under the UAE Copyright Law?............................................ 25Embodied in a Material Form ................................................. 25Applicable Law and Administering Body ............................... 26International Conventions ...................................................... 26Who is an Author? ...................................................................27Copyright in the Dubai International Financial Centre (the “DIFC”) ................................................ 30Copyright Infringement .......................................................... 30

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A guide to enhancing your brand protection in the United Arab Emirates

Brand Trajectory

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Protecting and Enforcing Trade Mark Rights in the UAE

A company’s brand is arguably one of its most valuable assets. A company protects and increases the value of its brand by protecting and enforcing its trade marks in the countries where it has a business presence, as well as ensuring that its trade marks are used correctly in all company and advertising materials.

What is a Trade Mark?

A trade mark is a sign which distinguishes the goods or services of an individual or entity from the goods or services of another individual or entity. The UAE Trade Mark Law centres around the ability of a trade mark to serve a distinguishing function. Where a trade mark is entirely descriptive, it would not qualify for protection as a trade mark.

A trade mark can take any number of different forms, such as a word, logo or device.

Certain non-traditional trade marks may also form the subject of a trade mark application. For example, a three-dimensional object, such as a perfume bottle or the shape of a particular product may form the subject of a trade mark application. That said, the scope of protection afforded by a three dimensional trade mark registration in the UAE is questionable, the reason being that the trade mark application form makes provision for the depiction of the object in two dimensions only, where the three dimensional aspect of the mark would be made up of a number of views (i.e. the back, front, top, underneath and sides). Brand

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owners should seek advice on how best to protect a three-dimensional object before filing a trade mark application in the UAE.

Other non-traditional trade marks such as colours, sounds and smells could also potentially form the subject of a trade mark application. However, this will depend on how the trade mark is filed and whether or not the Ministry of Economy recognises applications of this nature.

Applicable Law and Administering Body

Trade mark law in the UAE is governed by the UAE Federal Trade Mark Law (the “UAE Trade Mark Law”).

The Ministry of Economy is the governing body which administers the trade marks register.

International Conventions

In terms of its international obligations, the UAE is a signatory to the following international intellectual property treaties:

� the Paris Convention; and

� the Trade-Related Aspects of Intellectual Property Rights Agreement.

The UAE is neither a signatory to the Madrid Agreement nor the Madrid Protocol. It is therefore not possible to file an “international registration” in the UAE or to designate the UAE as a country for an existing “international registration”. Protection must therefore be sought on a national level.

Similarly, the Gulf Cooperation Council (“the GCC”) countries do not offer GCC-wide trade mark protection and registration must, therefore, be secured in each respective country for the moment.

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Why Register a Trade Mark?

Securing registration of a trade mark:

� Grants a brand owner a legal monopoly;

� Provides a brand owner with proof of ownership. In the UAE, most trade mark enforcement authorities will require a copy of a trade mark registration certificate before they will proceed with any trade mark enforcement action;

� Provides a brand owner with a defence to trade mark infringement proceedings; and

� Increases the value of a brand owner’s trade mark, giving the brand owner scope to increase royalty payments or the purchase price of the trade mark.

Categories of Trade Marks

A trade mark can be categorised according to its level of distinctiveness. An excellent trade mark has a high level of distinctiveness, while a poor trade mark has a low level of distinctiveness. A trade mark which is entirely descriptive of the goods or services in respect of which it is used or intended to be used will not qualify for protection

as a trade mark under the UAE Trade Mark Law, even if it has been in use for many years in the UAE.

Excellent

Poor

Invented Trade Marks (Excellent):

An invented trade mark is, generally speaking, a very good trade mark because it has no secondary meaning over and above the meaning it has acquired through use by the brand owner of the trade mark in respect of the brand owner’s goods or services.

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Arbitrary Trade Marks (Good):

An arbitrary trade mark has a meaning in a particular language, however, it has no meaning in respect of the brand owner’s goods or services. By way of example, the trade mark BALLOON for balloons is entirely descriptive, however, BALLOON has no meaning in respect of, for example, clothing.

Suggestive Trade Marks (Poor):

This type of trade mark is not directly descriptive of the brand owner’s goods or services, however, it is suggestive of the brand owner’s goods or services. This type of trade mark should be avoided, where possible.

Descriptive Trade Marks (Very Poor):

Many brand owners believe that a good trade mark describes its goods or services to its customers. In fact, descriptive trade marks are generally not registrable as trade marks and, in certain cases, no amount of use will render them distinctive. A descriptive trade mark is, generally speaking, difficult to enforce because the brand owner is effectively demanding a third party to stop using a word or phrase that that third party

would reasonably be expected to use in the ordinary course of its business activities.

Case Study

Company X is launching a new soft drink product in the UAE. It decides upon the brand name FIZZY DRINK for its soft drink product. Company X, through its authorised representative, incurs the cost of and applies for the registration of the trade mark FIZZY DRINK in class 32 for soft drinks. It goes to the considerable expense of marketing its soft drink through its website as well as on television and radio and in print advertisements. It also holds a number of events in Dubai and Abu Dhabi to raise awareness for the brand.

Some months later, Company X becomes aware that Company Y is using the words FIZZY FUN DRINK to describe its new orange flavoured soft drink. Around the same time, Company X receives a rejection from the Ministry of Economy of its trade mark on the basis that the mark is descriptive of “soft drinks”. Its legal representatives

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have advised Company X that its prospects of success in appealing the decision are low. Company X has, however, spent a great deal of money in launching this brand and therefore wishes to go ahead with enforcement proceedings against Company Y in spite of the rejection. Company X ultimately loses the enforcement proceedings and the judge decides in favour of

Company Y on the basis that all traders should be allowed to use the words FIZZY and DRINK to describe their products, particularly as Company X does not have a trade mark registration for the mark. Company X ultimately takes the decision to undertake a costly re-brand.

Lessons:

� Choose a distinctive trade mark;

� Do not choose words that other traders may reasonably require in order to describe their products or services, for example, “SOAPY CAR WASH” for a car wash service; and

� Conduct a trade mark register and in-use search before incurring the costs of launching a new brand.

Generic Terms:

A generic term is a term which started off as an invented or arbitrary trade mark, however, through incorrect use, it has become generic. Brand owners should seek advice on how to use a trade mark correctly in all company materials, including marketing and advertising materials, in order to avoid genericising a trade mark.

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Brand Clearance

For the most part, the UAE operates on a first to file basis. It is therefore important to conduct a search for a potential trade mark before filing an application for the mark to determine whether or not there are any trade marks owned by third parties on the register which could serve as a bar to the registration of the mark.

Conducting brand clearance searches in the UAE presents a number of challenges, including the following:

� There is no online trade mark database available to the public;

� Only identical trade mark searches are possible;

� Logo and device trade mark searches are not possible;

� Cross-searching is not possible and a separate search must be conducted for each class; and

� Possible translations or transliterations of a particular trade mark are not searched.

It is also important to note that a search of the trade marks register does not include a search of any trade marks which are in use in the UAE and it

is therefore advisable to conduct additional online and industry searches to locate any possible third parties who may have user rights in an identical or similar trade mark.

Securing Registration of a Trade Mark

Who can apply for registration of a trade mark?

� UAE national natural or legal persons carrying on commercial activities in the UAE or carrying on commercial activities or providing services in a state that deals reciprocally with the UAE;

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� A notarised Power of Attorney. Where signed outside of the UAE, the Power of Attorney must also be legalised up to UAE Consulate level; and

� A copy of the trade mark agent’s trade licence and trade mark agent certificate, where relevant.

Classification of Goods/Services

The UAE trade marks register is divided into forty five different classes of goods or services. The UAE operates on a single class filing system and a separate application is required for each class of goods or services in respect of which protection is sought.

The UAE follows the International Classification of Goods and Services, save for any goods or services which contravene the principles of the law of Shari’a. For example, it is not possible to secure registration of a trade mark in relation to alcohol-related goods and services.

Examination

On receipt of an application, the Ministry of Economy will examine the trade mark on the following grounds:

� Foreign natural or legal persons carrying on commercial activities in the UAE or carrying on commercial activities or providing services in a state that deals reciprocally with the UAE; and

� Public legal persons.

What is required to file a trade mark in the UAE?

� The Application Form, completed in Arabic, along with payment of official fees;

� Sixteen prints of the proposed trade mark;

� An official Arabic translation if the trade mark is a word mark which is in a foreign language (any language other than Arabic).

� A CD Rom with an electronic copy of the application form;

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� Does the trade mark meet the requirements for inherent registrability?

� Are there any prior conflicting trade marks on register which pose a bar to the registration of the trade mark?

A trade mark will not be registrable if, for example:

� it is not sufficiently distinctive to qualify for registration;

� it is immoral or contravenes the principles of the law of Shari’a or the laws of the UAE;

� it is identical or confusingly similar to a prior registered trade mark or prior application in respect of the same or similar goods or services; and

� it is identical or confusingly similar to a well known foreign trade mark.

Publication For Opposition Purposes

If the Ministry of Economy accepts the trade mark, it must be published in two local newspapers as well as in the Official Gazette. The UAE Trade Mark Law provides that any third party may file an opposition against the trade mark within 30 days of publication of the trade mark. This deadline is non-extendible.

Where an opposition is filed, both parties are given the opportunity to file submissions and, by request, to make submissions before the Ministry of Economy. Once the Ministry of Economy has issued its decision, either party may file an appeal to the Trade Mark Committee within 15 days of the date of being informed of the Ministry’s decision. A further appeal of the Trade Mark Committee’s

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decision can be made to the competent UAE court on receipt of the Trade Mark Committee’s decision.

Use of a Trade Mark

The UAE Trade Mark Law requires that a brand owner have an intention to use a trade mark at the time of filing an application. Accordingly, a trade mark must be filed by the individual or entity that will be using the trade mark. Where the corporate structure is more complicated, legal advice should be sought to identify which entity or individual is the appropriate entity or individual to own the trade mark.

A registered trade mark which has not been used for a period of five years from the date of filing of the application is vulnerable to cancellation on the ground of non-use.

Recording a Trade Mark Licence

The UAE Trade Mark Law provisions relating to the recordal of a licence impose a number of limitations on the brand owner in respect of the licensing of its brand. A trade mark licence must be recorded against the UAE trade marks register in order to

be effective against third parties. In addition, a licence agreement can only be recorded against a registered trade mark.

Brand Guidelines

It is essential for each brand owner to put in place brand guidelines in order to regulate the internal and external use of its trade mark and to avoid genericising its mark. Employees and licensees should be informed of how to use the brand correctly.

Enforcing a Brand

The UAE Trade Mark Law makes provision for the enforcement of a brand owner’s rights. In addition to the UAE Trade Mark Law, each of the seven Emirates of the UAE have their own regulations and practices. Dubai is the most developed of the Emirates in terms of the enforcement of trade mark rights and the Government authorities have the most

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experience in dealing with cases involving trade mark rights.

There are a number of ways in which a brand owner can enforce its trade mark rights against a third party, for example, through the Economic Crimes Section of the Dubai Police, through the Dubai Department of Economic Development and through the UAE Customs authorities. An important consideration to factor in is that, generally speaking, in the UAE, a brand owner must provide a copy of the trade mark registration certificate to the Government authority involved before the Government authority will proceed with any action against a third party.

Case Study

Company X has adopted and is using the trade mark BALLOON in respect of its clothing line. It has secured a registration for its trade mark in the UAE. It becomes aware that Individual Y is selling “BALLOON” branded clothing in a store in Dubai. Company X is able to obtain a sample of the product and confirms that the goods are counterfeit goods. It therefore instructs its legal representatives to prepare a complaint on its behalf. The complaint is prepared, in Arabic, and lodged with the Dubai

Department of Economic Development (the “DDED”). The complaint is accompanied by a sample of the goods as well as a copy of the registration certificate for the BALLOON trade mark in class 25 for clothing. The DDED reviews the complaint and, believing that there is a case to be made, conducts a raid at the premises. The raid is successful and the offending goods are seized and a penalty involving a fine issued.

Lessons:

� Company X was able to take action against the counterfeiter because of its registration of the BALLOON trade mark in the UAE. Most Government authorities will not take the matter further unless copies of the trade mark registration certificates have been submitted along with the complaint.

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Protecting and Enforcing Copyright in the UAE

Copyright is another essential component of a company’s intellectual property portfolio although it generally only comes to the fore once an infringement has taken place. It is, however, important to consider copyright in the early stages of the creation of a work which is subject to copyright law in order to regulate, by agreement, the ownership of the copyright. Although the UAE Federal Copyright Law (the “UAE Copyright Law”) makes provision for the registration of

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Free Zones

It is important to note that where the infringement of trade mark rights occurs in a free zone, it will be necessary to assess both the nature of the infringement and the particular governing laws of that free zone. That said, free zones typically do not have separate regulations governing trade marks and intellectual property generally, so the UAE Trade Mark Law will usually govern such matters.

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Which Works Qualify for Copyright Protection Under the UAE Copyright Law?

A work is defined as “any creative work in the field of literature, or the arts, or the sciences, or whatever kind or manner of expression, or whatever its importance or its purpose”.

Creativity is defined as “the innovative characteristic that gives to the work originality and distinctiveness”.

In order to be eligible for protection under the UAE Copyright Law, a particular work must qualify as a work as well as incorporating some kind of “creative” element, although the threshold of creativity set by the UAE Copyright Law appears to be fairly low. Under Article 2 of the UAE Copyright Law, there are a number of specific works listed.

Embodied in a Material Form

It is important to remember that ideas, thoughts, procedures, methods of operation, mathematical concepts, principles and mere facts do not in

copyright in the UAE, it is important to seek advice on whether or not a specific work qualifies for protection under the law. Where copyright has not been registered, it is important to keep a detailed record of all materials relating to the creation of the work to serve as evidence of ownership of the copyright and to provide a defence if ownership is ever challenged.

What is Copyright?

Copyright is a legal right that grants the creator of a creative work exclusive rights to use and distribute the work, for a limited time, with the intention of enabling the creator to commercially exploit the work.

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themselves qualify for copyright protection. An author will only enjoy protection under the UAE Copyright Law if the work has been embodied in a material form, and it qualifies as a work.

Applicable Law and Administering Body

As mentioned above, copyright is governed by the UAE Copyright Law. Unlike in many jurisdictions, the UAE Copyright Law makes provision for the registration of copyright in the UAE although it subsists automatically in any given work as well. The Ministry of Economy is tasked with handling deposits of copyrighted materials.

International Conventions

In terms of its international obligations, the UAE is a member of the World Trade Organisation and is a party to the Trade-Related Aspects of Intellectual Property Rights agreement.

The UAE is also a member of the Berne Convention, which is an international treaty governing copyright law.

Who is an Author?

In terms of UAE Copyright Law, an author is a person who creates a work and includes both a natural person and a legal person. There is also a provision under the law which creates a presumption that the author of the work is the person who puts his or her name on the work or to whom the work is attributed upon its publication, unless proven otherwise.

The UAE Copyright Law makes no distinction between foreign authors and UAE nationals and the law therefore applies equally to both.

The UAE Copyright Law also makes provision for the following situations of authorship:

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Authors of Collective Works

Where a group of authors create a work under the directorship of a single natural or legal person, the work created would be deemed a “collective work”. This type of work is also entitled to protection under the UAE Copyright Law.

Authors of Commissioned Works

Where a work has been commissioned, the author of the work remains the owner and the copyright does not automatically transfer to the person who commissioned the work. Where a work has been commissioned, it is therefore important for the copyright to be assigned to the person who commissioned the work, by agreement, where this is the intention of the parties.

Works Created in the Course of Employment

The law does not make provision for works which are created by employees in the course of employment to be owned by the employer. Although the copyright in a work can be assigned from an employee to an employer, typically, by way of inclusion of a clause in the employment contract, it is important to note that under the UAE Copyright Law, any agreement by the author

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Joint Authors

Provision is made in the UAE Copyright Law for more than one author to jointly own the copyright in a particular work, and each author’s portion of the work can be agreed upon in writing before creation of the work. Where a number of persons have participated in the creation of a work and it is not possible to separate the contribution of each of them, all of the participants are considered to be joint authors of the work equally, unless otherwise agreed in writing.

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(employee) to assign all of the author’s future intellectual production or more than five of his future works to the employer is null and void.

Copyright in the Dubai International Financial Centre (the “DIFC”)

A draft copyright law regulating copyright was released some time ago by the DIFC, however, the law has yet to come into force at the time of the writing of this guide.

Copyright Infringement

An author may bring an action for copyright infringement before the UAE Court of First Instance where a work has been published or exhibited without written permission of the author. Where interim relief has been sought, the Court may, as an interim measure, order that, for example, the publication, exhibition or production of the work ceases by the infringing party. Once an interim order has been issued by the Court, the author will need to file its substantive case within fifteen days of the order being issued, failing which the order would cease to have effect.

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The UAE Copyright Law also imposes a number of criminal penalties for copyright infringement and empowers Customs authorities to hold any materials which infringe the copyright in a particular work.

It is important to note that making a single copy of a published work for personal use is permitted as long as the purpose of the copy is not for profit and not for professional use. There are also other circumstances under which the making of a copy may not constitute copyright infringement. However, advice should be sought to establish if a particular instance of copying in fact falls with one of the circumstances permitted by the UAE Copyright Law.

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