Maintaining Your Trademark
To protect your Trademark you are required to take a proactive approach to maintaining them. This includes paying renewal fees, registering any licensing agreements, or updating the details of your IP Attorney.
By doing so, you not only keep exclusive rights to your Trademark but also help create a strong intellectual property scene in the UAE. Regularly check if the Trademark fits your business strategy and keep a watchful eye for any infringements.
The key part to maintain your Trademark is the renewal fee. This is paid every 10 years before the expiry of your Trademark. The fee is AED 6,500 paid via the platform you registered with Trademark with - MoEc Trademark Portal or DED IP Gateway. Failing to renew the trademark at the end of the 10 year period will result in the Trademark being terminated.
An important point to highlight is 'Trademark Cancellation' which occurs when a Trademark is not used for more than 5 years from registration or the last renewal. In this case, authorities can cancel the Trademark so it may be used by someone else. Requests for cancellation can be submitted through the MoEc’s Trademark Portal. A trademark could also be canceled by a third party, if they feel it clashes with their earlier rights in the UAE.
MoEc and DED provide various services for maintaining your Trademark.
List of Services from MoEc:
Modification & Maintenance Services
Trademark Renewal
Trademark Mortgage
Trademark Ownership Transition
Trademark Logo Modification
Trademark Product or Service Modification
Change Trademark Agent
Cancel Trademark By Owner request
Cancel Unregistered Trademark
Trademark Cancel Article 24
Trademark Mortgage Cancel
Submit A Priority Document
Licenses
Licensing the Use of a Trademark and Sublicensing the Use of a Trademark
Trademark License Cancel
Payments
Pay Publishing Fees for Trademark Registration
Pay Registration Fees for Trademark
Agents (for IP Attorneys Only)
Trademark Agent Registration Renewal
Trademark Agent Registration Modification
Trademark Agent Registration Cancellation
Objections & Grievances
Request for Grievance Against the Management Decision on a Trademark
Objection to the Acceptance of a Trademark Registration
Response to the Objection to Accepting a Trademark Registration
Define a Hearing on Trademark – The Objector
Define a Hearing on Trademark – Objected Against
Complaints Against Trademark Infringement
Document Services
Trademark Information Certificate
To Whom It May Concern Certificate – Unregistered Trademark
To Whom It May Concern Certificate – Registered Trademark
Copy of Trademark Registration Certificate
Copy of Trademark Renewal Certificate
List of Services from DED:
Create New Brand File
Create New Agency File
Open Brand Case
Open Agency Case
Enforce Your Rights
Generally, protecting your Trademark is a proactive effort that you can do on your own or with legal help. Catching out potential infringements early is key to stopping others from using or replicating your brand.
IP Attorneys can be hired to survey the market and look out for any potential infringement cases, allowing for quick and efficient action where needed. When they spot a case, you will be informed and asked about the course of action you’d like to take.
Here are the likely steps that can be taken to safeguard your Trademark(s):
Market Surveillance:
Keep an eye on the market to catch out any infringements. This can be done by yourself or an IP Attorney through market monitoring.
Trademark Register Monitoring:
Keep an eye on new trademark applications being filed / published for opposition to catch out any marks which are the same or similar. This can be done by yourself or an IP Attorney a Trademark watch service.
Register with Dubai Police and Dubai Customs:
Register your registered trademark with Dubai Police and Dubai Customs so they can catch out on anything that may be spotted in the market or come through the ports.
Register with DET:
Register your registered trademark with DET so they can catch anything that may be spotted in the market in the emirate of Dubai.
Filing Opposition Requests:
Review trademark publications in the UAE to be able to oppose any infringements during the 30-day opposition period.
Register a Case:
Before escalating the issue to litigation you can register a case with DET and Dubai Police, they will conduct an investigation into the infringement and carry out the necessary actions.
Cease and Desist Letters:
To avoid any legal battles, you can issue this type of letters to stop any infringement.
Take Legal Action:
If the party violating your rights doesn't respond to your warning, get ready for legal action. Ensure you have gathered all the necessary research and evidence for your case.
Enforcing your rights can be a complex process. We advise seeking assistance from an IP attorney, who possesses the necessary expertise and experience to handle all the necessary steps on your behalf.
This proactive approach can prevent prolonged situations and potential costs to your business. The cost estimate of going to court for a Trademark infringement can range from 90,000 AED to 200,000 AED, this includes legal fees and associated costs.
Where to Enforce Your Rights
A number of Government entities have a role in enforcing your rights in Dubai. These include: Dubai Courts, Dubai Customs, Dubai Police, DET, and DIFC.
Dubai Courts
The UAE follows civil law. There are no specific IP courts, but within the Federal Court system in Abu Dhabi, there's a judicial circuit where judges receive training in IP.
When a case is submitted it starts in the Court of First Instance, with appeals going to the Court of Appeal. Legal questions can be taken to the Court of Cassation.
Civil cases are similarly handled in all the other Emirates. Dubai, Abu Dhabi and Ras Al Khaimah have their own local courts for civil and criminal cases. While the remaining Emirates handle cases through the Federal Court in Abu Dhabi.
Dubai Customs
Through Dubai Customs, you can safeguard your trademark by registering it using their Request Trade Mark Recording service. This allows them to monitor incoming shipments, identify products with your trademark, and take necessary actions, including imposing fines, destroying goods, and involving Dubai Police in legal proceedings.
You can report infringement cases that have entered the market by using the Submit Trade Intellectual Property Complaint service provided by Dubai Customs. They will analyze the case and take appropriate actions.
Dubai Police
In the case of Dubai Police, a complaint can be submitted to Police HQ. This complaint is thoroughly studied, followed by a seizure of the goods in question. After successfully matching the seized goods to a genuine sample the case goes to a Public Prosecutor and follows the same procedure as Dubai Courts.
You may take a proactive approach with Dubai Police by registering your trademark with them. They will in turn monitor the market to catch out any infringements. When they catch anything out you will be informed and asked about the course of action you wish to take. If you wish to open a case, it follows the same procedure as when you submit a complaint
DET
In the case of, a complaint can be submitted to the IP Department of DET. This complaint is studied thoroughly, and if accepted the DET Inspectors will visit the premises. This could result in a seizure of the goods in question, and also potentially issuing a fine or license suspension against the infringing entity in Dubai. It can be done through IP Gateway by selecting 'Brand' in the Cases section.
DIFC
Dubai has a free zone with its own courts: DIFC. If a party is in this zone - the infringement happens there - or in the case both parties agree, the case can go to the common law courts of DIFC where proceedings are in English.
The procedures of a court case within DIFC and Dubai Courts are similar. The key distinction between each is that proceedings in DIFC are in English, while in Dubai Courts proceedings are in Arabic.
Commercialize Your Trademark
Trademarks can be a great way to generate more revenue and to grow your business. As your trademark becomes more recognizable, it will also become more desirable.
There are a number of ways to commercialize. This may be through licensing, franchising, partnerships, or selling your trademark outright for the suitable fee.
Article 30 to 34 of the Federal Decree by Law No. (36) of 2021 Concerning Trademarks discusses Trademark licensing, stating that a Trademark owner can authorize others to use their Trademark through a written and notarized contract. The law allows the owner to choose between an exclusive license (only one party can use the Trademark) or a non-exclusive license (multiple parties can use the trademark).
The owner can also license different parties to use the same Trademark for different goods or services. It's crucial to clearly define the scope of the license to specify the goods involved.
It is not mandatory to record this licensing agreement. However, it is highly encouraged and beneficial for the license to be registered in the case of any disputes or needs for enforcing. Also remember that a licensee is not allowed to enforce your Trademark on anyone without your knowledge and permission.
If you wish to commercialize your Trademark and license it out to others, these are the likely steps you would undertake:
Understand Your Trademark:
Clearly identify and understand the Trademark you want to license, including its scope, classes,
and any restrictions.
Legal Consultation:
Seek legal advice to understand the legal implications and requirements for Trademark licensing. An IP attorney can help you draft a comprehensive licensing agreement.
Determine Licensing Terms:
Decide whether you want to grant an exclusive or non-exclusive license. Define the scope, territory, duration, and any limitations on use.
Draft a Licensing Agreement:
Create a formal, written licensing agreement outlining the terms and conditions of the license. This should include details on usage, quality control, royalties (if any), and any restrictions.
Negotiate Terms:
Discuss and negotiate the terms of the licensing agreement with the potential licensee. Ensure mutual understanding and agreement on all aspects.
Quality Control:
Include provisions for maintaining quality standards associated with the use of the Trademark. This is crucial for protecting the integrity of the brand.
Registration with Authorities:
While not mandatory, it is recommended to register the licensing agreement with MoEc through the Trademark Portal to ensure its legitimacy and to mitigate any potential damages or allegations of non-use by the trademark owner.
Execute the Agreement:
Once terms are agreed upon, both parties sign the licensing agreement. Ensure it is notarized.
Compliance and Monitoring:
Both parties should adhere to the terms of the agreement. The Trademark owner should monitor the use of the Trademark to ensure it aligns with agreed-upon standards.
Renewal and Termination:
Establish provisions for renewing the license and conditions under which the agreement can be terminated, protecting the interests of both parties.
