Trademark enforcement in the UAE

Protection here runs on the federal trademark decree-law, and three bodies can be asked to act: the Ministry of Economy and Tourism, the customs authority of the emirate concerned, and the civil court. They do different things to the goods and to the other side.

Getting the mark onto the register is a different job — trademark registration in the UAE. The mechanics of infringement, with the published amounts and the legal references, are in our article on what to do about trademark infringement. Everything else a company meets in the country is on the United Arab Emirates page.

What your own portfolio has to survive

The first thing the other side looks at is your registration. Four questions decide whether a claim is worth starting, and all four are answered before a letter goes out.

• Is the owner on the register the company complaining? An unrecorded transfer does not bind third parties.
• Has the mark been used? Five consecutive years of silence lets any interested party ask for its cancellation.
• Does the registration cover these goods, or only the neighbouring ones?
• Was the seller licensed by somebody in your own group and then forgotten?

Three doors, and what each one does

The ministry

An administrative complaint against the use of the mark. It examines and decides; it awards no money and does not replace a claim for the loss.

The border

Customs can hold goods back from release, on their own initiative or on a right holder’s request. The only door that acts on a consignment before it reaches buyers.

The civil court

An urgent order describes the goods, seizes tools and proceeds, keeps the consignment out of trade and preserves the evidence. Compensation is a separate claim.

The court door runs on short clocks

An application to the summary-matters judge is decided within ten days of filing, and it can be made without the other side present where delay would cause harm that cannot be undone.

That speed is bought on credit. The other side has fifteen days from notification to challenge the order before the president of the court. The right holder has twenty days from the order to file the claim on the merits, and without it the order is cancelled on the defendant’s request. A guarantee against misuse of the right may also be required.

What the goods turn out to be

Not everything carrying your name is an infringement to act on, and establishing which you are looking at is cheaper before a complaint than after one. Standing watch over the places the name keeps reappearing is a separate, continuing job — brand protection and monitoring. Where the product itself is copied rather than the name, that is protection from clones.

What has to be in your hands

• The registration certificate and the classes it actually covers.
• Evidence of use: invoices, packaging and advertising, dated and kept.
• What you found, where and when, captured before anyone was contacted.
• Every licence, distributor and group company entitled to use the name.
• A power of attorney in the form the authority accepts, with its translation.

Sources: the ten-day decision, the fifteen-day grievance, the twenty days to file the claim on the merits, the exclusions from the customs route and the five-year non-use cancellation are in Federal Decree-Law 36 of 2021 on Trademarks, published by the Ministry of Economy and Tourism.