web
analytics
UAE TRADEMARKS - JAH CO.IP
UAE TRADEMARKS

Trademark Requirements:

A power of attorney duly legalized up to the UAE Consulate.

A certified copy of the priority document (in case priority is claimed).

 

Note: Powers of attorney legalized at the UAE Consulates abroad must be super legalized at the UAE Ministry of Foreign Affairs. The cost of this super legalization is US$ 75 in case it bears consular stamps of 1000 or 2000 AE ( equivalent to 272.50 or USD 545); however, if the document bears consular stamps of 100 or 200 AE (equivalent to USD 27.50 pr 55) , the cost of super legalization will only be US$ 600. 

 

As of 1st April 2014, the UAE Trademark Office will not accept any new filings without submitting the original Power of Attorney sufficing the legalization requirements including legalization of UAE Ministry of Foreign Affairs. Same regulations will apply for the opposition procedures, knowing that all opposition must be filed within 30 days from the publication date.  This will apply as well to any applications with a priority claim with an imminent deadline or oppositions cases with deadlines. However, all other actions such as recordal of change of name, address and assignment and renewal can be filed and official fees thereof can be paid without submitting the original Power of Attorney sufficing the legalization requirements including legalization of UAE Ministry of Foreign Affairs whilst any of these actions will not be processed until the submission of the power of attorney executed as required.

Time necessary to obtain registration is 10 to 12 months.

 

Filing up to Examination : 2-4 months

Examination up to Publication : 2 months

Opposition Period : 30 days from last publication date

End of Opposition Period up to Issuance of Registration Certificate : 3-4 months

Total Estimated Time Frame : 9-12 months

 

Renewal Requirements:

A power of attorney duly legalized up to the UAE Consulate.

A simple copy by email or fax copy of the registration certificate of the mark.

 

Change of Name/ Address:

A power of attorney in the new name and/or address duly legalized up to the UAE Consulate.

A certificate of change of name and/or address duly legalized up to the UAE Consulate.

A simple copy by email or fax copy of the registration certificate of the mark.

 

Assignment requirements:

A power of attorney executed by the assignee and duly legalized up to the Consulate of the United Arab Emirates.

A deed of assignment executed by both parties duly legalized up to the Consulate of the United Arab Emirates.

A simple copy by email or fax copy of the registration certificate of the mark.

 

Registered user/license requirements:

A Power of Attorney in the name of the licensee duly legalized up to a UAE Consulate abroad.

A copy of the license agreement executed by both parties and legalized up to a UAE Consulate abroad

A simple copy of the registration certificate of the mark. (If the same is not in our office).

 

In the United Arab Emirates a licence agreement has to be in writing. It is not permitted to license the use of unregistered marks. A trademark may be licensed for some or all of the goods or services in respect of which the trademark is registered. The sale of a registered trademark does not automatically terminate the licence. There are no specific statutory provisions in the UAE Civil or Common Law stipulating terms or conditions for the licensing of trademarks. The term of the licence depends upon the agreement between the parties but should not exceed the term of protection of the trademark registration.  There are no provisions in law for the recordal of a licensee. Recordal is voluntary, but a licence will not have any legal effect vis-à-vis third parties unless it is recorded and published. There is no time frame for a recordal and there is no prescribed form or content for the validity of a licence agreement. The terms and conditions agreed upon between the parties will constitute the licence agreement.

 

Effectiveness:
When the licence agreement is recorded in the Trademark Register and published in the Official Gazette it will be effective and enforceable vis-à-vis third parties from the application date of the recordal. The licence is published in the Official Gazette of Trademarks and in two local newspapers.

 

Infringement Proceedings:
There is an evidentiary presumption that use of a recorded licensee is permitted use. The licensee may not join the trademark owner in infringement proceedings. An infringement action can only be defended by the legitimate owner of the trademark. The licensee may call upon the owner to institute infringement proceedings. Nevertheless the licensee may not institute proceedings related to the trademark registration in his own name at any time even if the proprietor refuses or neglects to do so.

 

Opposition procedures:

Any interested party may object the registration of a trademark, and submit the written opposition to the Ministry, or send it to the Ministry by registered mail within thirty days from the date of last publication. The Ministry shall notify the registration applicant with a copy of the opposition to his application within fifteen days from the date of receiving such opposition.  The registration applicant has to file a written counter statement to such opposition to the Ministry within thirty days from the date of being notified with the opposition. If the counter statement is not received within the prescribed term, the applicant shall be deemed to have abandoned his application.  Before deciding the oppositions submitted, the Ministry shall hear the sayings of both parties or the party requesting such hearing.  The Ministry shall issue a decision rejecting or accepting the registration. It may determine whatever limitations or conditions deemed fit in the latter case.  Any interested party may petition before the Committee against the Ministry’s decision within fifteen days from the date of being notified therewith. He may appeal against the Committee’s decision before the concerned civil court within thirty days from the date of being notified with the decision.  It shall not entail appeal of a decision of accepting the trademark registration that the registration procedures should be stopped unless the concerned court decides otherwise