Why should you have Registered Trademarks?

All serious businesses need registered trademarks to protect the reputation of their business and avoid expensive lawsuits. Without registered trademarks business can be vulnerable to accusations of trademark infringement if the business name you are using is the same as or very similar to a registered trademark of another business. If your business has a registered trademark a trademark search was probably part of the registration process and you would know about other businesses using trademarks similar to the one you want to register. You would have chosen another trademark or negotiated trademark rights with the registered owner. By registering a trademark, you would have immunized your business from expensive legal action.

If you do business without registered trademarks other businesses can use your business name to do business. You will have no legal rights to stop the other business using your name and reaping the benefits of public recognition associated with the name. More importantly, your business name will be associated with any negative feelings incurred by the other business. One additional benefit of trademark registration is the potential for monetary damages from another company for using your trademark.

Having registered trademarks gives businesses improved status among potential customers. Trademarks indicate your business is concerned with public perception and is aware of the value of a good reputation among the public. A registered trademark implies your company products and services are better than competitors. A trademark associated with a good reputation is a valuable commodity in itself.

Trademark Registration Rules in the United Arab Emirates

I: Trademark Restrictions
There are several restrictions concerning the content and appearance of trade marks. It is important to be aware of these restrictions before applying for trademark registration:
• A trademark must not be a translation of another famous mark or a previously registered trademark.
• Proposed trademark must not cause the consumer public to associate the mark with another registered mark
• Trademarks must not be National or Foreign symbols or icons of metal and paper currency
• Trademarks must not contain these words or phrases: Privilege, Privileged, Registered, Registered drawings, Copyright, or Imitation is forgery.
• Registering a trademark must not belittle the value of other products or services in the class
• Marks must not be owned by prohibited persons or entities
• Trademarks must not mislead the public or present false data about the origin or characteristics of the product or service
• Proposed trademarks must not contain an imitated, imaginary or forged trade name
• Indications of titles or honors than cannot be proved by the applicant are not allowed
• A trade mark can not contain, names, surnames, photographs or emblems of a third party without consent from the party or his heirs
• Geographical names which could falsely indicate origin or source of the product are prohibited
• Trademarks must not be identical or similar to religious symbols
• The symbols of the Red Cross and the Red Crescent and similar organizations are prohibited
• Trademarks must not include flags or national symbols (or imitations of symbols) of the State, Arab organizations and institutions, and foreign countries unless the application includes an authorization form from the entity.
• Proposed trademarks must not violate public morals or desecrate public order
• Trademarks must include a distinctive characteristic or property separating it from traditional denominations of goods, products or services and common drawings or pictures of ordinary products.

II: Trademark Registration Process
The process for registering a trademark in United Arab Emirates begins with an application filled out and submitted to the Registrar. If a proposed trademark is not disqualified by the Registrar a notice will be placed in Trademark Journal and two local daily Arabic newspapers. Objections to the trademark can be presented to the registrar within thirty days. The Registrar’s decision about the objections or oppositions will stand unless an appeal is presented to the ministry and heard in a competent court. If no opposition arises a certificate of registration will be issued.

III: Additional Considerations
A registered trademark is valid for ten years and renewable for the same period with renewal fees paid during the tenth year of protection. Any person or entity may request cancellation of the registration if the registered trademark is not used in the UAE for five consecutive years. An additional fee will be added to late renewals up to three months. Renewals are subject to the same publication and objection rules as the original application. Ownership is assignable but assignments are must be recorded and published to affect third parties. Changes in address must be recorded to protect the owner’s rights.

IV: Requirements for Trademark Registration
Original documents must be presented with the application. The application must be presented in two copies (separate files). All the restrictions previously mentioned must be followed. For companies, two duly notarized copies of the Memorandum of Association or the Articles of Incorporation must be included. Additional required documents:

• A notarized power of attorney Legalized by the Consulate of the United Arab Emirates
• Twenty 6cm x 6cm prints of the proposed mark
• A certified copy of foreign origin trademark registration
• if the applicant is a company two copies of Memorandum of Association and Articles of Incorporation are required.
• For companies or partnerships, certificates stating partners or shareholders are nationals or extracts of entries for all partners
• Documents describing the name, address, nationality of the applicant and nature of the business
• A list of goods or services covered by the trademark
• If the trademark contains words in a foreign language, a certified Arabic translation must be submitted.

V: Trademark Registration Renewal
Registered trademarks are valid for ten years but trademark registration can be canceled if the trademark is not used in UAE for five consecutive years. Trademark renewal follows the same procedure as the initial registration with the same list of required documents. The renewal will be published in Trademark Journal and subject to objection from interested parties. Renewal fees are paid during the final year of trademark protection. If renewal is late a three month extension includes a fine in addition to normal registration fees.

VI: Trademark Cancellation
There are four conditions that will lead to cancellation of a registered trademark. If a mark is found to be similar or identical to an Israeli mark it will be canceled. A civil court can cancel a trademark after five years without use. A trademark owner can request cancellation. If a trademark is found to be unlawfully registered it will be canceled.

VII: Some Additional Requirements for Special Situations
For Service Marks the additional requirements are:

• If a local agent is used the agent must have a power of attorney duly notarized and legalized by the Consulate of the United Arab Emirates.
• Twenty prints of the trademark/service mark colored or black & white (Size: 6 cm x 6 cm).
• If priority is claimed, a certified copy of the home / foreign application / registration.
• Documents stipulating Name, Address, Nationality and Nature of business of the applicant.
• List of services to which the service mark applies.
•If the mark includes one or more words written in a foreign language, a certified translation in Arabic must also be included.

In addition to the normal trademark requirements Collective Mark registration requires these documents:

• If a local agent is used the agent must have a power of attorney duly notarized and legalized by the Consulate of the United Arab Emirates.
• If Priority is claimed, a certified copy of the home/foreign application and registration

Registration of Quality Control Marks requires several additional documents:
• If a local agent is used the agent must have a power of attorney duly notarized and legalized by the Consulate of the United Arab Emirates.
• Two copies of the Articles of Incorporation specifying the legal persons responsible for quality control and testing. Certified and legalized by the UAE
• An approval document from the Minister
• A list of the goods to which the mark will be applied. (Two copies.) The stated testing measures must mention the quality specifications
• The persons using the mark must be listed
• The quality control and testing rules followed by the applicant (two copies) Any amendments made to the rules must be included. (amendments are allowed after the initial filing)
• Twenty prints of the proposed mark 6cm x 6cm in size
• A complete list of covered goods
• If priority is claimed, a notarized (legalized) copy of the original application
• Documents explaining the meaning and origin of the proposed mark

Applications for Trademark or Service Mark Assignments to other parties should include the following documents:
• If a local agent is used the agent must have a power of attorney duly notarized and legalized by the Consulate of the United Arab Emirates.
• A notarized (legalized) deed of assignment executed by both parties
• The original Certificate of registration for the mark

To register a User or licensee these documents are required:
• If a local agent is used the agent must have a power of attorney duly notarized and legalized by the Consulate of the United Arab Emirates.
• A copy of the license agreement executed by both parties – legalized
• The original registration certificate

Trademark registration by Individual Merchants requires two copies of each of these documents:
• The commercial permit
• proof of entry in the commercial register
• A United Arab Emirates Consulate legalized commercial agency agreement. If the document is not in Arabic a notarized translation is required
• The agent’s identity card or entry documents
• Notarized power of attorney
• The declaration

How we can help you with the registration

PushDigits has the experience and local knowledge to get your trademark registered as quickly and easily as the law allows. We know the agencies and local offices that are involved and we can guide you through the maze of regulations. By contacting us before you begin the process you can save yourself a lot of time and trouble. We can help you be sure your proposed trademark meets the requirements and does not offend the sensibilities of local citizens before you start the application process. After your trademark is registered we will be here to provide additional services to make your business life easier. We offer bookkeeping, accounting supervision, management accounting, audit preparation, internal audits in addition to our company formation assistance.