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Registering a Trademark in the UAE: Procedures and Protection
A trademark in the United Arab Emirates is any distinctive mark used to distinguish the goods or services of one enterprise from those of others. Its registration and protection are governed by Federal Decree-Law No. 36 of 2021 on Trademarks and its Implementing Regulation issued by Cabinet Resolution No. 57 of 2022. Registration begins with filing an electronic application with the Ministry of Economy, followed by examination of the application and publication in the Ministry's bulletin, then final acceptance and payment of the registration fee. A registered trademark enjoys protection for ten years, renewable, and entitles its owner to prevent others from using it, alongside precautionary measures, suspension of customs release, and criminal penalties reaching imprisonment and fines against forgery and imitation.
How Do You Register Your Trademark in the UAE and Protect It from Infringement?
1. What Is a Trademark, and What Cannot Be Registered?
Under the Decree-Law, a trademark is anything that takes a distinctive form of names, words, signatures, letters, symbols, numbers, addresses, seals, drawings, pictures, engravings, packaging, figurative elements, shapes, a colour or combination of colours, or any mixture thereof — including three-dimensional marks and hologram marks. A mark may also relate to sound or smell, provided it is used or intended to be used to distinguish the goods or services of one enterprise from another, or to indicate control or examination.
By contrast, the following are not regarded as trademarks and may not be registered under the law:
2. Who May Register, and the Step-by-Step Procedure
Any natural or legal person is entitled to register their trademark in accordance with the provisions of the Decree-Law. The application is filed by the owner of the mark if domiciled in the State, or by an agent registered in the trademark registration agents' register. Applications submitted by entities established in the State's free zones are treated as applications submitted by a party domiciled in the State. The registration procedure proceeds as follows:
1- Filing the application through the electronic services of the competent department, for one or more classes under the international classification of goods and services, with fees multiplying by the number of classes.
2- Examination of the application and verification that it is not identical or similar to a previously registered mark; the Ministry then issues its decision to accept, reject, or make acceptance conditional upon specified conditions or amendments.
3- Responding to the competent department's decision within thirty days of notification, failing which the applicant is deemed to have abandoned the application.
4- Upon acceptance, the publication fee is paid, and the mark is published in the Ministry's bulletin at the applicant's expense within thirty days of notification of the acceptance decision.
5- Final acceptance occurs upon the lapse of thirty days from publication without objection, or upon a final judgment, followed by payment of the trademark registration fee within thirty days of the end of the objection period.
Any interested party may file a reasoned objection to the registration within thirty days of the date of publication, after paying the prescribed fees. Registration of the mark takes effect from the date of filing the application as recorded in the trademark register.
3. Duration of Trademark Protection and Its Renewal
The protection period arising from registration is ten years, beginning from the date of filing the application, and the owner may renew it for similar terms. The renewal request is submitted to the competent department during the final year of the protection period and for a subsequent period of six months, with payment of the prescribed fees. Renewal is granted without a new examination and is published in the Ministry's bulletin. If this period lapses without the owner filing a renewal request, the mark is deemed struck off the register as of the date the protection period ends.
4. Priority Right and Protection of Well-Known Marks
If an applicant wishes to enjoy the priority right based on an earlier application filed in a State party to the Paris Convention for the Protection of Industrial Property, or in an international agreement to which the State or one of the GCC States is a party, the applicant must attach to the application a copy of the earlier application and a statement of its particulars within six months of the date of the application relied upon. Otherwise, the right to claim registration priority lapses.
As for a well-known trademark whose fame has crossed the borders of the country in which it was registered, it may not be registered for another party for identical or similar goods or services except with the owner's consent. In determining fame, regard is given to the extent of public knowledge of the mark, the duration of its registration or use, the number of countries in which it has been registered or become well known, and its value. The owner may request the cancellation of a similar mark registered with the Ministry within five years of the date of its registration, unless bad faith is established.
5. Assignment, Transfer of Ownership, Licensing, and Mortgage
The application for trademark registration may be assigned, and ownership of a registered trademark may be transferred for consideration or without consideration, mortgaged, or attached, together with the commercial business or the exploitation project, unless otherwise agreed. Ownership is also transferred by inheritance, will, or gift, or by any other legal form. In all cases, the transfer of ownership, mortgage, or attachment is not enforceable against third parties until it is recorded in the register and published.
The trademark owner may license one or more persons to use the mark for all or some of the goods or services for which it is registered, provided the licence contract is written and notarized, and its duration may not exceed the period prescribed for trademark protection. The licensee may not assign the licence to others or grant sub-licences unless otherwise agreed with the owner.
6. Confronting Infringement: Precautionary Measures and Customs Suspension
Upon infringement, or to prevent an imminent infringement of any of the protected rights, the rights holder may obtain an order on petition from the judge of urgent matters at the competent civil court to take one or more precautionary measures. These include a detailed description of the infringement, attachment of the materials, tools, equipment, and proceeds resulting from the infringement, preventing the infringing goods from entering commercial channels and barring their export, and preserving evidence. The judge must decide on the petition within a period not exceeding ten days.
A rights holder or their representative who has justified grounds to believe that counterfeit or forged goods, or goods bearing a mark similar to their registered trademark, may be imported, may submit a written request to the customs authority to suspend the customs release of such goods, supported by the necessary evidence and information.
The customs authority must decide on the request and notify the applicant in writing of its decision within seven working days from the date of submission. If accepted, the decision is valid for one year or for the remaining period of the mark's protection, whichever is shorter.
The customs authority may, on its own initiative, issue a decision to suspend the release of imported, transit, or export-bound goods when sufficient evidence indicates they are counterfeit. The rights holder may file a substantive action within ten working days of being notified of the suspension decision; otherwise, the decision is deemed null and void.
7. Penalties for Forgery and Imitation
The Decree-Law provides deterrent criminal penalties against the infringement of trademarks, without prejudice to any more severe penalty stipulated in another law:
For anyone who forges a registered mark or imitates it in a manner that misleads the public, uses a forged or imitated mark for commercial purposes knowingly, places another's mark on their goods in bad faith, possesses tools to imitate marks, or imports or exports goods bearing a forged or imitated mark knowingly.
For anyone who sells, offers for sale, or possesses with intent to sell goods bearing a forged or imitated mark knowingly, or uses a mark without right in the prohibited cases in a way that leads to the belief that registration has occurred.
In the case of repeat offence, the penalty is doubled up to twice the maximum prescribed for the offence. The court may order the closure of the establishment and confiscation of the tools, machinery, and materials used in the offence, and may publish the conviction judgment at the convicted party's expense.
8. Cancellation of the Trademark
The trademark owner may request the Ministry to cancel the mark from the register, for all or some of the goods or services for which it is registered. The mark may also be cancelled in other cases specified by the law, including:
1- A request by the owner of a similar well-known mark to cancel the registered mark within five years of its registration, unless bad faith is established.
2- A request by any interested party to cancel a mark that has not been used for five consecutive years, unless there were exceptional circumstances preventing its use.
3- Cancellation by the Ministry, on its own initiative or at the request of interested parties, of a mark registered in violation of the law's provisions.
If a mark is cancelled, it may not be re-registered for another party for the same goods or services or those similar to them until three years have elapsed from the date of cancellation, unless the cancellation was based on a judgment of the competent court that specified a shorter period.
Frequently Asked Questions
Legal References
• Federal Decree-Law No. 36 of 2021 on Trademarks (Articles 2, 3, 4, 6, 8, 11, 21, 24, 28–34, 45–52, 56).
• Cabinet Resolution No. 57 of 2022 on the Implementing Regulation of Federal Decree-Law No. 36 of 2021 (Articles 2–11, 15–18, 24).
AWADH ALMHEIRI LAW FIRM AND LEGAL CONSULTATIONS in Dubai provides trademark registration and protection services before the Ministry of Economy — from assessing the registrability of a mark and checking its similarity to earlier marks, through the examination, publication, objection, and renewal procedures, to infringement and trademark imitation actions, compensation claims, and suspension of customs release of counterfeit goods, tailored to the needs of companies and enterprises in Dubai.
Our trademark registration and anti-infringement services extend to Abu Dhabi, Sharjah, Ajman, Umm Al Quwain, Ras Al Khaimah, and Fujairah, where we handle registration applications, use licensing, ownership transfer, mortgage, and cancellation, alongside precautionary measures and penalties for trademark forgery and imitation — ensuring comprehensive legal protection for the trademarks of business owners across all Emirates of the State.