Intellectual Property

The Ahmed Law Firm counsels clients on intellectual property matters, including trademark and copyright issues, in the UAE. A company’s name, trade dress and trademarks are key to marketing and selling products or services. Copyright protection helps protect your original work of authorship including computer software, literary works, and architecture.

The UAE has comprehensive laws on trademark and copyright. IP laws in the UAE are federal and cover trademarks, copyrights, patents and industrial designs. The UAE is a signatory to all major IP conventions. Most of the laws in this field emanate from the French civil codes. All trademark and copyright documents and court proceedings must be in Arabic. In this regard, the UAE does not have a system of Court precedent and is a first to file jurisdiction.

Copyright

Federal Law No. 7 of 2002 Concerning Author’s Rights and Neighboring Rights gives protection to copyright holders. Under this law, an author is owner of his work. Furthermore, there is no automatic ownership by employer and no assignment of future copyright, which is in contrast to many jurisdictions. However, aside from these two differences UAE copyright law generally follows international norms.

Generally, Copyright is an automatic right and there is no need to register. However, the work should be recorded and should be an “original.” Any assignment must comply with the law, meaning that it must be in writing and specify the subject of the work.

Trademark

Article 2 of Law No. 37 of 1992 incorporating Law No. 8 of 2002 defines a trademark as; “anything which takes a distint form comprising names, words, signatures, letters, numbers, designs, symbols, titles, stamps, seals, portraits, engravings, advertisements, packages or any other mark, or any compilation of these, if this is used or intended to be used either to distinguish goods, products or services, whatever their origin, or to indicate that the goods or products are attributable to the owner of the mark by reason of their manufacturer, selection or trade in them, or to indicate the provision of a certain service.”

To register a trademark license in GCC countries, the agreement must be signed by both parties, translated into Arabic and legalized. The duration of the license cannot exceed the validity period of the registered trademark.

It should be noted that trade names are corporate or business names registered by entities often as a legal prerequisite to carrying on business. Companies need to protect both trademarks and trade names. In the UAE, the trademarks register is maintained at a Federal level while trade names may be registered with authorities within each of the Seven Emirates.

Under UAE law, a trademark registration is valid for 10 years as of the date of filing the application. Once a trademark is accepted, it is published in the Trademark Journal as well as in two daily Arabic Newspapers. Interested parties may file a notice of opposition within 30 days from the date of publication. If no opposition is filed, the trademark is registered. The UAE trademark office also does not accept multi-class application for trademarks.

In addition, a proprietor of a trademark may license one or more persons to use their trademark. The trademark license should be recorded with the trademarks registry. The license may be exclusive or non-excusive. A non-exclusive license would mean that the licensor could allow more than one entity to use the same trademark with respect to the same goods or services. If the proprietor of the trademark wants to limit the license with respect to certain goods, for example limiting the use of a trademark to tennis shoes only, the proprietor should clearly define the scope of the license in the contract.

Once a license for trademark use is granted to a third party, the licensor may not cancel the trademark and remove it from the trademark registry without the written permission of the trademark licensee. However, only the proprietor of the trademark is allowed to take legal action against trademark infringers, the trademark licensee has no right to do so. Nevertheless, a civil action for damages may be available to the trademark licensee. In order for such actions to be effective, It is important that licensees and licensors record with the trademark registry.

The Ahmed Law Firm helps clients through all facets of the trademark and copyright process in the UAE. Our practice includes;

• Trademark and copyright availability search, analysis and filing,

• Recording of licenses, assignments, mergers and registered
users of trademark/service mark rights

• Assisting in all administrative procedures and filing trademarks and service marks opposition and cancellation actions.

• Preparation of infringement/non-infringement opinions