UAE Law and Practice Contributed by: Maria Farrukh Khan, Fatima Shah, Heera Sandeep and Essam Abdel Khaleq, United Trademark & Patent Services
5.7 Combining Revocation/Cancellation and Infringement Cancellation and infringement cannot be heard together; these are treated as different actions before different committees, and timelines may differ. 5.8 Measures to Address Fraud Under Article 24 (4) of the Trademark Law, the Ministry of Economy may cancel fraudulently registered marks on its own initiative or on interested parties’ request. An application under investigation is not suspended pending results. For assigning a trade mark, an attested assignment document and POA from the assignee are required. Partial assignments of trade marks are not permitted. Copyright assignments/licences must be in writing, stating the transferred/licensed rights, purpose, dura - tion and place (Article 9 (1) of the Trademark Law). Registration is not required for validity (Article 4 (2)). Payment is made in cash or in kind, as a lump sum or revenue share (Article 10). Moral rights are non- transferable and remain with the author (Articles 5 and 9 (3)). Economic rights are transferable, in full or in part (Arti - cle 9 (1)), and pass to heirs upon death (Articles 5 (1) and 16 (1)). If there are no heirs, the Ministry exercises the rights (Article 44). 6. Assignments and Licensing 6.1 Assignment Requirements and Restrictions 6.2 Licensing Requirements or Restrictions For a trade mark, an attested licence agreement is signed by the licensor and licensee, with POA from the licensee. The mark must be registered; pending applications cannot be licensed. Types of licences include: • exclusive – only the licensee can use the mark for territory/goods/services;
• non-exclusive – multiple parties can use the same mark for territory/goods/services; • unrecorded – no effect on third parties and cannot be enforced against them; and • naked – no quality control provisions and does not invalidate the trade mark. An application for copyright must be made in writ - ing, stating the licensed rights, purpose, duration and place (Article 9 (1) of the Trademark Law). The licence can be full or partial, and time-limited or perpetual. The licence may cover reproduction, rental, broad - casting, transmission, public communication and online availability (Articles 7 and 8). Software/applications/databases are governed by package/label/installation agreement terms; the user is bound by those terms (Article 12). 6.3 Registration or Recording of an Assignment or Licence For trade marks, assignment must be recorded in the register, and published, to be enforceable against third parties (Article 28 (3)). For licensing, recording is not necessary (Article 31). Copyright assignments/licences are valid without registration (Article 4 (2)). Although registration is not mandatory, it helps prove ownership and priority. Unregistered transfers risk disputes over date, scope and extent, and conflicts with later transfers. 7. Initiating Trade Mark and Copyright Lawsuits 7.1 Timeframes for Filing Infringement Lawsuits There is no statutory time requirement for trade mark/ copyright infringement claims. For trade marks, civil compensation claims must be brought within three years from awareness of any infringement. Since the date of awareness is difficult to prove, filing within three years of infringement is needed. Copyright is governed by the UAE Civil Code. For tort-based claims (infringed without any contractual relation - ship), the period is three years from awareness of any
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