Strict Provisions under the UAE Law to Protect Intellectual Property of a Business - Essay Example

• Introduction

The essay will revolve around evaluating different dimensions of the business law in relation to the “Trademark Registration”. In UAE, the Ministry is solely responsible for formulating strict rules or regulations in order to prevent misuse of registered trademarks. The term ‘trademark’ basically stands for certain mark, symbols or patterns which are used to differentiate between products or services. It is evident that business owners place emphasis on such trademarks in order to create their unique position in the marketplace. As per the UAE law, identical trademarks cannot be registered because such marks are closely knitted with characteristics of products or services. The focus of this study will be to portray the UAE law in context of the trademarks.

• Discussion
• Definitions

As per the UAE law, there are some key definitions which need to be considered by business organizations while safeguarding respective trademarks. According to Article 1 that has been amended by the Federal Law there are some important phrases and terms. The key terms as per this article are-

• The State – UAE State
• The Circular – Trademarks circular that are issued specifically by the Ministry
• The Symbol – It can be stated as the single visual drawing
• The Engravings – It represents embossed marks
• The Hallmarks – It basically stands for the incised marks
• The Register – It stands for the trademarks registration before the UAE Ministry
• The Committee – It indicates the trademarks committee established to be aligned with the set Law

The term ‘trademark’ is not properly understood in certain scenarios. However, Article 2 signifies various definitions of ‘trademark’. A trademark can be stated as anything that adopts a distinctive shape comprising of hallmarks, drawings, numbers, signatures, letters, words, pictures, packages, etc., that are used for differentiating between services or products. On the basis of such symbols, it becomes easier to state that particular goods or services belong to the Trademark owner. On the contrary, there are certain elements which cannot be registered as trademarks of a company. For instance, marks which tend to violate public morale, common designs or symbols or marks without any key definition, marks resembling any religious character, marks consisting of false indications, marks linked with moral or physical person with whom dealings have been prohibited, any marks or symbol that depreciate value of other services or products, marks appearing to be a replica of already established mark, etc., cannot be registered as a trademark. According to the law, it is evident that marks denoting public emblems or symbols related to the Arab states or any foreign institution or a modified version of public emblems or flags cannot be regarded as a trademark. On the other hand, symbols of the Red Cross or the Red Crescent cannot be considered during trademark registration. As per Article 4, trademarks which are moving beyond the home country’s boundary would not be registered unless an official power of attorney is generated or the owner applies for a registration. Renowned trademarks cannot be registered again even for different kinds of products or services because it might adversely affect the original owner of the trademark.

• Registration and deletion of Trademarks

The trademarks can be stated as valid only when it is legally registered. In general context, the Ministry needs to maintain a ‘Trademarks Register’ for entering application of the trademark owners. As per Article 5, there are other details which need to be included within the register such as address and names of owners, activity type, goods description, ownership transfer, and change in the license type, amendments or mortgage details. There are some key personnel who are authorized to be involved in the trademark registration process such as non-nationals residing in the State or in other country, State nationals and other public juridical individuals. It is mandatory for every individual applying for the trademark registration to follow the procedures mentioned in the Federal Law no.37. Article 8 of the Implementing Regulation clearly states that such trademarks can be registered for more than one product class, though class distinction might not be mentioned within the application form. Hence, it is evident that the UAE law permits registration of the same trademark for more than one product class, making it easier for businesses in the expansion stage. However, a single application can be used only in cases where the core substances are the same and product classification is properly denoted in the application form, as mentioned in Article 9. The UAE Law even claims that identical trademarks cannot be registered under any circumstance. It is necessary for the authorized personnel to keep a track on the trademarks being registered so as to prevent any kind of link with previously registered trademarks. The Ministry is authorized to impose any modifications or restrictions in order to avoid similarity between two trademarks. Article 11 clearly mentions that such modifications should be communicated to trademark owner, prior to implementation. There are provisions made under the UAE law by which applicants are able to file a request for their trademark registration infront of the Committee or the civil court. However, it is mandatory for the applicants to file the grievance request before the Committee within a time-period of thirty days from the date of notification. On the contrary, if the request is not accepted by the Committee then the applicant can further apply a petition before the civil court within sixty days from the notification date. Article 12 of the UAE law emphasizes on the fact that no petition beyond the set time-frame will be considered by the higher authority.

The executive owner of the trademark is one who has been involved in the registration of the mark. It is evident that if an owner has used the trademark for selling of products or services for complete 5 years, then one’s ownership cannot be challenged. Article18 denotes that any modifications related to the trademark would follow similar procedure as in case of application. Another important aspect which is inter-linked with trademark registration is the protection of the mark. According to the UAE law, the owner is able to protect the trademark for a period of 10 years. Beyond 10 years, the owner needs to undergo a legal procedure for renewal of the trademark. The Ministry is solely responsible for sending the legal notification regarding the expiration date along with the renewal application form. Arguably, if the trademark owner fails to apply for renewal within three months after the expiration date then the Ministry is authorized to eliminate the mark from the Trademark Register. The UAE law even consists of provision by which trademarks can be deleted. In Article 20, it has been mentioned that trademark deletion shall be in accordance with guidelines of the Implementing Regulation. However, in case of license agreement, consent of the licensee is highly mandatory. The unduly registered trademark can be directly deleted by the Ministry after notifying the concerned owner. It can be stated that such deletion of the mark can be stopped by the owner within thirty days following the notification. An interested person can file a request in the civil court for deletion of a specific trademark, if the mark or symbol was not used within a time-frame of five consecutive years. The conditions out of control that can lead to non-use of the trademark are governmental conditions imposed on services and goods distinguished by the trademark or any form of import restrictions. As per Article 24 of the UAE law, the Ministry is bound to delete the mark which is found to be similar to the Israeli mark, emblem or symbol by the Israeli Boycott Office within the State. The legal procedure of deletion even comprises of publishing about the trademark deletion in the two Arabic newspapers and the circular published within the State. Article 26 states that a deleted trademark cannot be re-registered by another firm. However, a person can apply for registration of similar trademark after three consecutive years from the deletion date. In overall context, UAE law follows strict rules or regulation both in case of registration and deletion of the trademark.

• Transfer of Ownership and Mortgage of Trademarks

The mortgage of trademarks need to be done under a contractual agreement where some clauses should be incorporated denoting that trademarks cannot be sold without obtaining consent of the owner. According to the UAE law, transfer of ownership will be exhibited in light of the regulatory framework (Malikovna, 2015). The first user needs to mention in the agreement that once the ownership is been transferred he or she would not claim any further right on the trademark.

• Agreements licensing the use of Trademarks

Article 5 to 8 of the UAE law denotes the procedure for the trademark registration. Similar approach needs to be undertaken for the licensing phenomenon. For instance, the licensee should sign the agreement where it needs to be mentioned that use of the trademark will be restricted to selling, designing, packaging or distributing products or services of the owner (Malikovna, 2015). As per the Federal Law, the licenser has full authority to impose fine or take strict legal actions against the licensee if the set clauses are not properly followed or trademarks are intentionally misused.

• Marks allocated for the evidence of the control or inspection of specific products

According to the UAE law, the maximum marks are allocated in regard to the inspection of goods. It can be claimed that majority of legal decisions undertaken in context of the trademarks are based on real-time evidence. To be more precise, evidence of control denotes the close scrutiny exhibited on specific products and their associated trademarks. On the basis of such evidence, the court and the Ministry decides whether a trademark can be registered, whether any illegal means have been adopted to misuse trademarks, etc.

• Sanctions

The UAE law also reflects upon the act of counterfeiting a registered trademark. It is evident that without such strict provisions it would not have been possible to prevent use of similar trademarks. According to Article 37, the legal authority can impose a fine of AED 5.000 or issue a sentence of imprisonment in case of a person who is involved in fraudulent use of imitated or counterfeited trademark. Similar penalty or imprisonment is also applicable in context of individuals who use a registered trademark for own products or services. Any person who is found guilty to sell products or services constituting an imitated trademark also needs to bear similar punishment. According to Article 38, similar penalty is also applicable for those who use an unregistered mark within the business papers. Apart from the stated criminal offences, an individual who has been subjected to any damage because of counterfeiting the trademark can claim a suitable compensation against the accused. It is necessary for the trademark owner to prepare a list encompassing tools or articles that are intended to be used along with the required preventive measures, as mentioned in Article 41 of the Federal Law. The legal procedures surrounding the intellectual property management helps in minimizing the rate of fraudulent cases.

• General and Transitional Provisions

Article 42 states that within 90 days distrainee can take serious actions against the distrainer. The court is solely responsible for confiscating the distrained objects. It is evident that the value of such distrained objects is firstly subtracted from the compensation or fines imposed. In certain scenarios, the court is also solely responsible for destruction of those services or products constituting illegal marks. According to Article 44, the trademark owners in UAE should comply with the legal procedure within 1 year of coming into force. In situations, where there is more than one business owners claiming for the same trademark then the first user has the right to register the trademark. The starting date of operation, registration details and surrounding elements are considered by the court, prior to undertaking the final decision. In overall context, such legal provisions are enacted by officers who are appointed by the Minister of Commerce and Economy, and Minister of Justice. The Cabinet decides on the fees payable in relation to the procedures encompassed within the intellectual property rights. As per Article 49, the necessary decisions or regulations are issued by the Minister. The general and transitional provisions within the UAE law are structured by the Minister.

• Conclusion

From the above study, it can be concluded that there are strict provisions under the UAE law to protect intellectual property of a business. It is evident from this study that the authorized personnel are able to undertake strict actions against those who fail to be aligned with the trademark regulations. The registration and deletion of trademarks can be stated to follow similar procedure. In certain cases, imprisonment or even huge percentage of fine is imposed upon those found guilty.

• Reference

Malikovna, B. S. (2015). Concept of legal protection of intellectual property rights. Procedia-Social and Behavioral Sciences, 176, 998-1004.