Trademarks are considered a method of guarantee for both the product and the user as they prevent the confusion between products bearing specific trademarks with similar products that bear a different trademark in addition to building trust in the products of the producer. Producers have started using trademarks in order to identify their products among the increasing categories of goods and products and the emergence of similar products. Producers also aim to perfect their manufacturing in order to maintain their customers and the quality of their products which guarantees their survival against the competitors.
Trademarks also play an important role in marketing and advertising policies that companies follow whether to promote themselves, their services or their products. These trademarks aid in one way or another in influencing on the customers and achieving a competitive advantage through utilizing assets in order to maintain quality and make continuous improvements that guarantee a good reputation and exposure.
History of Trademarks:
The idea of trademarks appeared in the middle ages particularly within specific manufacturing and trading communities. These groups, especially in France and Italy, had gotten accustomed to placing their names on their products. During that period, trademarks were one of two types as per the purpose of use. The purpose of the first type is what could be called branding trademarks which were used on animals, for example, in order to prove and indicate ownership.
The second type of trademarks is known as trademarks and was used differently from the first type since it was used by groups of manufacturers and traders to identify the product manufacturer and origin and to guarantee quality. Also, use of such trademarks then was compulsory and was a legal commitment on every manufacturer and trader in order to trace the products in the case that they were not good or defective.
The Birth of Recent Trademarks:
Throughout the industrial revolution and the trade boom of international trade in the new world as a result of many changes in the industrial systems, trademarks played an important role until it became a necessary factor in manufacturing, production, and distribution through providing consumers with various goods of the same type but varying in quality and characteristics and at different prices. As such, options for selection were provided though choosing different names for the products in the market which is exactly what is meant by trademarks.
With the evolution of trade and the different forms it took on to become a trade system of a large assortment of products manufactured by different manufacturers in addition to the sale of these products by the manufacturers in different cities and countries, trademarks became more than a mere means of identifying ownership and changed from being a compulsory item to an important asset in the enterprise industry.
In light of this evolution and commercial expansion, a need arose for legal coverage and protection for the owners of commercial enterprises whose trademarks were being forged and commercially exploited without prior permission in addition to the need to protect the consumers from confusion and deception.
In addition, there was a need to put down legislative procedures that regulate the process of protecting trademarks in order to regulate commercial competition and to limit it within legal boundaries through guaranteeing rights and duties among the owners of enterprises from one side and securing the rights of the consumers through protecting them from fraud and deception on another side.
As such, many countries adopted the process of promulgating special laws relating to protecting industrial property in general and laws regulating the protection of trademarks and registering them in specific.
Therefore, legislations approved the principle of registration as a method of legal protection for trademarks that have been registered at national offices demonstrating the importance of registering trademarks.
What is a Trademark?
A trademark is a reference that takes on a unique form in order to differentiate the products produced or services provided by a company from the products produced or services provided by another company.
Among the types of trademarks are words, letters, numbers, drawings, colors, pictures, shapes, logos, symbols, or a combination of any of the previous. Audio trademarks (sounds) and olfactory trademarks (scents) can also form trademarks.
Types of Trademarks:
A trademark placed on specific products for a specific enterprise in order to differentiate that product from all other identical or similar products offered by the competitors.
Service trademarks differ from trademarks in that the trademark is not used to differentiate products but instead to differentiate all tools and equipments used in providing the service of a specific enterprise such as the trademarks of different hotels.
Conditions of Registering Trademarks:
Unique character identity
The trademark must have a special identity that differentiates it and makes it different from other trademarks used to distinguish similar goods or products. Also, the trademark must have an innovative characteristic that makes the external appearance unique. This is an important factor as trademarks that lack the innovative characteristic make it difficult for the consumers to identify the goods being differentiated in addition to making it difficult to protect its owner from other competitors.
External unique characteristic
Trademarks should not be similar to other registered trademarks of similar products or services or trademarks that have been applied for registration. In other words, the trademark must be new in application on those products or services and cannot be identical or similar to other trademarks to an extent that it misleads the costumers. The similarities between the trademarks that lead to rejection of registration do not have to be identical but instead sufficient to cause confusion to an average careful regular consumer in regular purchasing conditions.
A trademark may not be registered or considered a trademark if it contains any prohibited elements or shapes such as those that may be indecent, in violation of the general order, general logos of countries, flags, pure religious symbols, red cross symbol, or geographic names if using them may cause confusion as to the origin of the products or services in addition to trademarks that include false information about the description of the goods.
The country became concerned with regulating the legislations for trademarks on a local scale when the Emirate of Ras Al Khaimah issued a Local Law concerning trademarks on the 1st of March 1974.
On a federal level, legislators of the UAE issued Federal Law No. 37 of 1992 pertaining to trademarks followed by Ministerial Resolution No. 6 of 1993 with the executive regulation of the previous Law and Ministerial Resolution No. 18 of 1993 regarding establishing the fees for the procedures completed in accordance with the provisions of the Trademark Law.
The UAE Trademark Law deals in its provisions with essential matters, rules, and principles that do not deviate in summary from the subjects dealt with in any other Law concerning trademarks. The UAE Trademark Law was stated in seven chapters as follows:
Chapter One: definitions that clarify words, phrases, and their applicable meanings in addition to the meaning of trademarks, their types, and reasons for rejection of registration.
Chapter Two: conditions for registering and deregistering trademarks through assigning the persons who have the right to register their trademarks and clarifying that the procedures for applying for registration are subject to the rules and conditions of the executive regulation of the Law and the role of the competent authority regarding formal and objective inspection.
Also, it became compulsory that the decisions of the competent authorities are justified and written and that the process of objecting to a decision of the competent authority is through the trademark committee to announce accepted trademarks in the official gazette and two local newspapers in order to leave room for the persons concerned to object to the registration.
This chapter explained that the registration validity shall be from the date of application and that the owner of the trademark shall be given a certificate including the details of the application to register the trademark
This chapter has determined the administrative and legal reasons for deregistration a trademark registration.
Chapter Three: the same means of disposal that apply to asset rights apply to the transfer of ownership and pledging of trademarks as it is an asset.
Chapter Four: licensing use of trademarks in consideration of the possibility that the trademarks may be licensed to be used by others.
Chapter Five: trademarks used to indicate supervision of certain products or services. The UAE legislator assigned a separate chapter for this type of trademarks as a result of its nature and the special conditions that it requires.
Chapter Six: establishing penal protection for the owner of the trademark rights through laying down the punishments in reference to possible crimes against trademarks in addition to civil protection through seeking indemnity at the Civil Court.
Chapter Seven: general and transitional provisions to adjust the position of registered or used trademark owners in the UAE when enforcing this Law.
As a result of the UAE joining the Convention for the Protection of Industrial Property in accordance with Federal Decree No. 20 of 1996 which requires protection of trademarks through laying down some provisions for the substantive principles relating to trademarks,
And subsequently joining the agreement and protocol regarding the accession of the UAE into the World Trade Organization and the Uruguay Round Agreement in accordance with Federal Decree No. 21 of 1997 which forms the agreement regarding the intellectual property rights relating to trade (TRIPS Agreement), one of its most important agreements, which determined the special standards for protection of rights arising from trademarks. As such, it was necessary for the UAE to undertake amendment of its national legislations regarding trademarks that are in agreement with its commitments towards provisions of international agreements that the UAE has joined in the field of trademarks.
As such, Federal Law No. 8 of 2002 was issued amending some provisions of Federal Law No. 37 of 1992.
In accordance with Article 6 of the Law, registering trademarks is considered a right of every national whether a natural or corporate person that practices trade, manufacturing, craftworks, or services. Also, it is the right of every non-national whether a natural or corporate person practicing in any of the previous fields in any country that treats the UAE similarly.
The application must be submitted to the trademark section at the Ministry on the form set for that purpose and must not include an application for registration into more than one category from the list of products and goods.
The competent authority shall receive and examine applications on the form first through verifying the applicant and the necessary documents…etc. The competent authority shall then examine the application on the merit in order to confirm that the conditions for the trademark have been met. The authority may also impose conditions and amendments to the
design of the trademark as it sees fit in order to prevent confusion with a previously registered trademark.
An applicant whose application is rejected or suspended until a condition is met may submit a complaint to the trademark committee. In the situation that the committee upholds the decision of the Ministry, the applicant may appeal the decision of the committee before a competent civil court.
If the Ministry accepts a trademark, it shall be announced in the trademark publication issued by the Ministry. The applicant shall also announce such trademark in two daily newspapers in the UAE on his/her own expense in order to open the door for objections on such registration.
If the trademark is registered, then it shall be effective as from the date of the application and the applicant is provided a certificate stating as such. The protection period resulting from the registration shall be 10 years. The owner of the trademark must ensure that the protection is extended for consecutive periods of 10 years each by applying for renewal during the last year of the effective protection or during the first three months after such period.
A trademark is administratively deregistered in the following cases:
- if the owner of the trademark did not apply for renewal within the first three months following the expiry of the protection period;
- if the owner of the trademark applies for the deregistration of such trademark from the register.
A trademark is legally deregistered in the following situations:
- if any person of interest applies to deregister a trademark on the ground of the fact that the trademark was not in use in a serious manner for five consecutive years. However, the court shall not rule to deregister the trademark if the owner of the trademark submits sufficient justification for not using the trademark;
- if it is proven that the trademark has been registered without any right thereto.
Disposals of the trademark:
A trademark shall be subject to all means of disposal of assets such as transfers to third parties, pledges, attachments, and license of use as it is considered an asset.
In accordance with Article 27 of the Trademark Law, ownership of the trademark may be transferred, pledged, or attached along with the commercial site or the enterprise using the trademark to differentiate its products or services or without them.
Disposal of the trademark is considered a formal disposal not an agreement as Article 29 of the Law provides that transfer of the ownership of a trademark or pledging it is not considered a deed until it is officially entered in the trademark register and announced.
Disposal of the trademark may also be in the form of a license of use to third parties. In accordance with Article 30 of the Law, the owner of a trademark may, through a written and attested contract, license one person or more to use the trademark for all or some products or services registered for it on condition that the period of such license does not exceed the established period of protection.
Legal Protection of Trademarks:
Civil protection: the trademark owner benefits from this right whether the trademark is registered or not. In the case that a person has violated the owner’s right through counterfeit, forgery, or use of the trademark to distinguish similar products or services and this violation caused or will cause actual damage to the owner’s interests, the owner has the right to file a suit against illegal competition.
Penal Protection: established for registered trademarks only in accordance with the offenses pointed out by the UAE legislator in the Trademark Law:
- Counterfeit and forgery of trademarks: counterfeiting means copying the trademark precisely or copying main parts of the trademark which makes the counterfeit trademark identical to the original to a large extent. Forgery, on the other hand, means creating a trademark similar in while to the original trademark with the intention of deceiving the audience regarding the origin of the products that are distinguished by the trademark. The punishment for counterfeiting or forgery is imprisonment and a fine not less that AED 5,000 or either one of them.
- Use of a counterfeit or forged trademark has the same punishment as the previous offense. The legislator has made this type of use a criminal offense whether the user was or wasn’t the counterfeiter or forger. It is not necessary for this offense to occur that the counterfeit or forged trademark be placed on products or services but sufficiently used in other ways such as announcing them or placing them on the show window of the commercial company with bad intentions, i.e. prior knowledge of using a counterfeit or forged trademark.
- Use of a trademark owned by third parties has the same punishment as that of the previous offense. A person is using someone else’s trademark on their own products or services with bad intentions.
- Sale of products that bear counterfeit or forged trademarks, trademarks placed without any right to do so, putting them up for sale or trade, or possession of such products with the purpose of selling them with bad intention.
- Use of a an illegal trademark that may not be registered. The punishment for the user of such a trademark shall be imprisonment for not more than one year and a fine no less than AED 5,000 but not more than AED 10,000 or either one of those punishments.
- Deceiving others that the trademark is registered through engaging in any practice that may cause the consumers to believe that the trademark is registered and has the same punishment as the previous offense.
In addition to the previous punishments determined by the UAE legislator, there are added punishments determined as follows:
- Temporary closure of the company premises for a time period not less than 15 days but not more than six months and is decided by referring to the previous offenses.
- Precautionary measures represented in the trademark owner’s right to request a report and a detailed list of the machinery used in violating the trademark or the products which bear the trademark, the subject matter of the violation, or requesting their attachment in order to prove the violation of the owner’s right regarding the trademark whether before or after filing a civil or penal suit. However, the following conditions must exist in order to exercise this right:
- Attaching to his application to the Court an official document indicating the registration of the trademark;
- Providing a financial guarantee assessed by the Court in order to indemnify the attached when necessary.
- Confiscate and destroy. The court in any civil or penal suit may rule to confiscate the attached items in addition to ordering to destroy illegal trademarks, products, and wrappings bearing those trademarks, machinery and tools used counterfeiting or forging. The court may also dispose of the confiscated items in any way that is sees fit including selling and discounting its price from the fines or compensations ruled against the attached items.
* Source: Ministry of Economy, Abu Dhabi Office, P.O. Box: 904, Telephone: 026271100