UAE Law and Practice Contributed by: Maria Farrukh Khan, Fatima Shah, Heera Sandeep and Essam Abdel Khaleq, United Trademark & Patent Services
2. Trade Mark Ownership, Protection and Rights 2.1 Types of Trade Marks The Trademark Law recognises traditional and non- traditional trade marks. Traditional marks include: • word marks (names, words, letters, numbers and slogans); • figurative/device marks (logos, symbols, shapes and drawings); and • combined marks (words + graphics combinations). Non-traditional marks include: • 3D marks (product/packaging shapes with distinc - tive character); • colour marks (single colours or combinations, if distinctiveness is proven); • sound marks (distinctive sounds identifying goods/ services); • scent marks (olfactory marks if distinctive and clearly represented); • hologram marks (holographic images or effects); • position marks (specific placement of a sign on a product); and • motion marks (moving or animated logos). Special categories include: • collective marks (used by association or group members); • certification marks (certify quality, origin, materials or standards – used by authorised third parties, not the owner); and • geographical indications (identify goods from specific places where quality, reputation or char - acteristics are attributable to geographical origin – can be registered by producing communities, competent authorities, producer groups/associa - tions or foreign entities with protection in the home country). Service marks are recognised for all service classes (Classes 35–45) under the Nice Classification. Article 3 (7) prohibits the registration of third-party names or
surnames without consent. However, surnames can be registered if distinctive, non-descriptive and non- misleading, and if they do not violate public morals or traditions. Famous foreign marks are protected without domestic use or registration if demonstrably well-known among the UAE’s relevant public. Criteria for well-known mark status include: • public knowledge and recognition due to promo - tion; • sufficient duration and extent of registration and use (internationally and in the UAE); • commercial value; and • tangible impact on the promotion of associated goods/services. Well-known marks receive enhanced protection against unauthorised registration or use, even for simi - lar or identical goods. Protection extends to dissimi - lar goods/services if dilution risk exists or use implies false connection. Evidence for enforcement includes market surveys, advertisements in international publications, print media articles, advertising and media coverage, sales figures, and proof of foreign registration and use. 2.2 Essential Elements of Trade Mark Protection Marks must be sufficiently distinctive to distinguish certain goods/services from others. Use in commerce is not required for trade mark recognition or main - tenance in the UAE, though it is recommended. To prove acquired distinctiveness (secondary meaning), the evidence must show the public recognises the mark as identifying a specific source, including: • lengthy use in the UAE; • sales invoices; • contracts and distribution agreements; • online sales data; and • promotional evidence (TV, print, digital campaigns, social media).
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