For many people coming to the United Arab Emirates to set up a business in a free zone or as a sponsorship arrangement with a mainland company, choosing a trademark will be one of the more challenging issues.
In many areas of the world, trade mark registration has very limited restrictions and regulations. This is not the case in the UAE where trademarks are very tightly controlled, largely due to cultural and religious issues that may be very unusual or even unknown to those who have not lived in the UAE.
As a business owner moving a company or starting a company in the free zones or as a mainland company with a sponsor, working with an attorney familiar with UAE trade mark law and registration practices will be a must. This will save considerable time and frustration in having the trademark approved for use within the country.
The UAE provides the option for trademark registration for both businesses as well as consumers. For the business, it provides the opportunity to create a unique identifier for the company that allows for branding and marketing. Making a product easy to identify through names, words, images, graphics, seals, logos and even through a voice allows for increased branding and brand recognition.
For consumers, the use of trademarks provides assurance that they are buying a product from a trusted source. Since a trademark is provided to only one company, seeing the specific brand of the product provides confirmation of an authentic product. In the UAE, as well as around the world, trademarks have to be easily recognizable as different from already registered trademarks to avoid consumer confusion and to protect brand integrity.
While business is set up through the Department of Economic Development and, in some cases through the free zone authority, the registration of trademarks is managed by a different department.
In this case, it is the Ministry of the Economy. As it this is not a local department or agency, once the trade mark is accepted it is considered valid across all of the United Arab Emirates.
The business applying for the trademark will need to submit all required forms and documents to the Ministry of the Economy. The Ministry officials will then review all documentation and verify that the trademark does not violate any of the provisions of the law for registration.
However, even once this is completed, the process is not over. The Ministry will approve the trademark, and then the approval has to be published. This must be included in the Ministry of Economy bulletin as well as two newspapers. The newspapers have to be in Arabic.
Then, anyone in the public or any interested party can file an objection to the trademark. This has to be done by mail or, more recently, by email. The objection has to be received no more than thirty days after the last publication of the decision.
If there is no objection, the business will be notified and the trademark, as approved, can be registered. This will include the business paying the registration fee. A certificate is provided that will include the business details, the owner of the trademark’s information as well as the goods and services on which the trademark can be used. Keep in mind, in the UAE a separate trademark application will need to be filed for each class of goods or each class of services on which the trademark will be used.
Should there be an objection, the Ministry must notify the business applying for the trademark in 15 days. The business then has the opportunity to provide additional information and to present their case that will be heard by the Ministry and a final decision on the approval and use of the trademark will be provided.
While not required, most businesses will have their legal representative complete a pre-filing search of existing trademarks. This can be extremely effective in eliminating issues with objections to close approximations of currently used and approved trademarks.
Trademarks once approved, are valid for 10 years. Prior to the expiration of the trademark, it can be renewed. Should a trademark lapse in renewal, which includes a three-month extended grace period, and another company apply and be approved, the original trademark owner will not have legal recourse to stop the use of the trademark. It is also important to make sure to pay the original trademark registration fees within thirty days of receiving the certificate of registration.
Do Not Use
As a business, choosing the best trademark to represent your business and present a clear, identifiable brand for your customers is essential. When choosing a sign, consider the following issues that cannot be used or registered as trademarks throughout the Emirates.
Specific symbols that are understood to represent specific religions or religious characters cannot be included in a trademark. This includes symbols or signs that are exactly like a recognized religious symbol or those that are close approximations or similar likenesses of a religious symbol.
The restriction on geographic names is not absolute, but there are very specific limitations. The trademark cannot include a geographic name if it suggests the product, good or service is associated with a specific area that is unrelated. This also extends to names or symbols that may imply the origin of a product in a way that may be confusing to the public or to the consumer.
While not the same names, it is also not acceptable to use any symbols, logos or imitations of these symbols or logos that designate the UAE, international organizations or any international country. There is an exception if the country, organization or UAE or Arab country provides approval for the use.
Morally offensive words, images, graphics, marks, patterns or pictures cannot be trademarked in the UAE. This is often a challenge for foreign businesses as morality is culturally and religiously based in the UAE. Images or pictures that may not be considered offensive in a Western cultural setting may be considered offensive in the UAE and throughout the Middle East.
Symbols that are considered to be “contrary to the public order” are also not allowed to be registered as trademarks. This is also a cultural determination and definition that an attorney familiar with the approval process will be helpful in explaining as it relates to a particular image, text or graphic.
No Degrees Unless Earned
A trademark cannot include a professional designation or a degree of honor that is not earned and granted to the applicant. In other words, a product cannot be marketed as “Dr. Smiths Cream” unless the applicant for the trademark is, in fact, Dr. Smith.
Another interesting specification with trademark registration is the need to have approval by an individual or his or her heirs or any use of their name, image, logo or title in a trademark.
As choosing a trademark is an important part of doing business in the UAE, working with a law firm with experience in trademark registration will be an important step. Most companies will need to modify their initial trademark idea once they receive the pre-filing search and then have someone with experience in the process review the trademark they are considering. For more information, visit www.stalawfirm.com.