His Highness Sheikh Khalifa Bin Zayed Al Nahyan, President of the State, May Allah bless and protect him, issued a Federal Decree Law No. 36 of 2021 in regard with trademarks,
The provisions will be effective as of January 2, 2022.
It is decided to terminate Federal Law No. 37 of 1992 regarding trademarks
and its amendments as of the effective date of this Decree-Law.
Hereinafter, we summarize the main points of the Decree:
Article (2): Definition
Triple dimensions tags “3D tags”, Hologram tags, Sound and Smell tags are included in the types of trademarks.
Article (11): Right of Priority in registering a trademark (New Article has been added)
If the trademark applicant or his successor wishes to reserve his right of priority in registering the trademark based on a previous application filed in a member state of the Paris Convention on Industrial Property or a multilateral international agreement to which the state or one of the GCCS countries is a party, or a dual international agreement where the state is a party to it, he must attach to his application a copy of the previous application and a declaration stating the date of the previous application, its number and the country in which it was filed, within (6) six months from the date of the registration application on which the priority right is based, otherwise his right to claim priority for registration shall forfeit.
Article (37): Registering trademarks for non-commercial purposes (Ne
w Article has been added)
*It is permissible to register a Non-Trade Mark, such as logos adopted by associations of public interest or used by professional institutions to distinguish their services or insignia(badges) of their members in accordance with the conditions and rules specified by the executive regulations of this decree-law.
*The registration of this Mark shall have all the effects stipulated in this Decree-Law. It is not permissible to re-register the said Mark in the event of cancellation or non-renewal of similar or similar goods and services.
Article (38): Types of Geographical Indications (New Article has been added)
The registration of geographical indications as a trademark shall be in accordance with the provisions of this decree-law and its executive regulations.
A geographical indication may be a sign or group of signs in any form such as words, including geographical or personal names, letters, number, holographic elements, color, or colors.
Article (39): Prohibitions (New article has been added)
It is prohibited for every natural or legal person to do the following:
1-Using any means in naming or displaying any goods in a way that suggests that its geographical origin is not the real one, that misleading the public about this origin.
2-Using geographical indication in a way that is considered unfair competition in accordance with Paris Convention for the Protection of Industrial Property, or in accordance with the international laws and agreements in force in the State.
Article (40): Geographical Indications Protection (New Article has been added)
Geographical indications have the protection stipulated in this decree-law as long as these indications are protected in the country of origin.
Article (41): Geographical Indications Protection (New Article has been added)
All geographical indications with similar names shall enjoy the protection stipulated in this decree-law, provided that their products are treated fairly, and consumers are not misled.
Article (42): Geographical Indications Register (New article has been added)
The ministry shall prepare a registry called geographical indications registry, in which the geographical indications whose registration has been accepted and all the data related to it, and the actions they respond to in accordance to the provisions of this decree-law.
Article (43): Cases of non-registration of the geographical indicator (New article has been added)
The geographical indications don’t enjoy trademark protection, and it may not be registered in any of the following cases:
1-If the geographical indication is likely to cause confusion with another trademark, it shall be the subject of an application for registration under consideration in good faith.
2-If the geographical indication is likely to cause confusion with pre-existing trademark for which rights have been acquired through its bona fide use in the State.
3-If the geographical indication registration as a trademark is not permissible according to the provisions of this decree-law
Article (44): Applicability of provisions to geographical indications (New article has been added)
Without prejudice to the provisions of bilateral and international agreements in force in the state, the provisions relating to trademarks and those stipulated in this decree-law and its executive regulations shall be applied to geographical indications, regarding the following:
1-Submit the application for registration.
2-Check the registration application, and acceptance or decline it.
3-Objection “Opposition" to registration.
4-Deletion and cancellation of registration.
5-Transfer of ownership of the Geographical Indication and the License to Use and seize it.
6-Compensation for the infringement of rights established under the provisions of this decree-law.
Article (45): Customs Release (New article has been added)
1-Subject to the laws in force in the State, the Customs Authority-upon the request of the right holder or his representative-may order by a reasoned decision not to release customs for a period of twenty (20) days for any materials in violation of the provisions of this decree-law.
2-The Customs Authority may not prevent the right holder or his representative from inspecting the items ordered not to be released by customs.
3-The executive regulations of this decree-law defines the conditions, rules and procedures related to inspection and submitting a request to stop customs release and deciding on it.
Article (46): Exceptions (New article has been added)
The following are exempted from the provisions of article (45) of this decree-law:
1-Small quantities of no-commercial goods, which are included in the passengers’ baggage or are sent in small parcels.
2-Goods offered for trading in the markets of the exporting country by the owner of the right of the trademark or with his consent.
Article (47): Precautionary procedures when rights are infringed (New Article has been added)
1-The right holder may, upon infringement or to avoid an imminent infringement of any of the rights established under the provisions of this decree-law issue an order on a petition from the urgent matters judge of the civil court with concerning the dispute jurisdiction to take one or more appropriate precautionary procedures, including the following:
Make a detailed description of the infringement, the goods that are subject to this infringement, and the materials, tools and equipment used or may be used in that.
Seizing the materials, tools and equipment referred to in the previous paragraph of this article and the benefits and profits resulting from the infringement.
Preventing the goods that are the subject of infringement from entering the commercial channels and preventing their export, including imported goods immediately after the release of their custom.
Preserve any evidence related to the infringement.
2-The Civil Court Judge of Urgent Matters may instruct the petitioner to present the evidence in his possession that his rights have been infringed or that the infringement is about to occur, and that he may assign him to provide information that is sufficient to implement the precautionary procedures and to identify the concerned goods.
3- The Civil Court Judge of Urgent Matters shall consider the petition within a period not exceeding
ten (10) days from the date of its submission, except for considering the exceptional cases that he deems appropriate.
4- The Civil Court Judge of Urgent Matters, when necessary, may consider the matter, based on the petition, without summoning the other party if it is likely that the delay in issuing the order may cause the
plaintiff irreparable harm, or if there is a fear that the evidence will be lost or destroyed, in this case, the other party must be notified of the order without delay immediately upon its issuance, and it is permissible when the notification is immediately after the order is executed.
5-If the Civil Court Judge of Urgent Matters orders a Precautionary procedures to be taken without summoning the other party, the defendant may, after being notified of it, file a grievance before the president of the court in which was issued the order within fifteen (15) days from the date of his notification, and the president of the court in this case may confirm, amend, or cancel the order.
6- The Civil Court Judge of Urgent Matters may instruct the petitioner to provide an appropriate financial guarantee(bail)or a bank guarantee to protect the defendant from misuse of the right, and the amount of the
bail or the guarantee shall be taken into account to be reasonable and appropriate.
7-The right holder has the right to file a lawsuit regarding the origin of the dispute within twenty (20) days from the date of the issuance of the order to take the precautionary procedures, or from the date of his notification of the rejection of the grievance stipulated in clause 5 of this article, as the case may be, otherwise this order is canceled at the request of the defendant.
Article (49): Penalties (Article 37 in the previous law)
Penalty was changed from five thousand to the following:
Without prejudice to any more severe penalty stipulated in any other law, whoever commits any of the following acts shall be punished by imprisonment and a fine of not
less than one hundred thousand dirhams (100,000) and not more than (1.000.000) one million dirhams.
Article (50)- (Article38 in the previous law)
The penalty-which was not less than five thousand dirhams (5,000) and not more than ten thousand (10,000)- was changed to the following:
Without prejudice to any more severe penalty stipulated in any other law, a penalty of imprisonment for a period not exceeding one year and a fine of not less than fifty thousand dirhams (50.000) and not exceeding two hundred thousand dirhams (200,000) or either of these two penalties shall be imposed.
Article (54) Electronic System for registering trademarks – (New Article has been added)
The ministry may establish an electronic system and an electronic database available to the public, to register and renew trademarks and complete the necessary procedures for this registration. The ministry makes the aforementioned electronic database for the competent local authorities.