Before entering a new market, it is crucial to examine any potential Intellectual Property (IP) issues thoroughly. Since it serves as a gateway to the larger Middle East and is still the primary hub connecting East and West, the United Arab Emirates (UAE) is a market that businesses continue to find appealing for expansion. This status is currently enhanced by the ongoing EXPO 2020, which brings millions of tourists, businesspeople, and investors to the nation.
The main factors for one’s intellectual property (IP) while entering the UAE market will be careful in this article, from initial research to the registration and enforcement of IP rights (IPRs).
An evaluation of the risk that the UAE’s current IPRs pose
Ask an IP specialist to officially examine the local trademark office database before entering the market. The expert can provide advice on the risk that any recently filed or registered trademarks may cause to the registration and use of the desired trademark by being able to identify virtually all of them.
If identical or similar prints are light on, one must acquire more information to identify all possible defence strategies. For instance, it must be ill-opposed if the proprietor of a competing mark is using it unlawfully. However, in some circumstances, coexistence agreements or a slight modification of the intended effect may be sufficient to solve the problem.
A patent search that includes expert guidance from a patent attorney and is typically accessible in a few weeks can be an end to evaluating the technical aspects of your product. These searches range in depth from basic to more complicated, and as a result, the costs also vary.
This research reveals whether and how the product might need to be modified (using a so-called “workaround”) or whether it would be wise to negotiate with the previous patent owner.
May also vet Trade names beforehand. The seven Emirati mainland Chambers of Commerce (rectus Departments of Economic Development) and the Free Zones each retain their database, making this difficult.
Physical market surveys in the UAE differ from those conducted if no potential infringement is suspected. Further research on the length and scope of such unfavourable use is a guide in cases of predicted conflicts.
Additionally, verify the owners’ names before any linked IPRs, trade names, or domain names are registered. Can determine the full scope of the dispute by cross-checking any potential global exposure of the rival company’s products. Can then develop A strategy from a legal and a business standpoint.
IPRs must be registered.
Registering one’s IPRs immediately after deciding to start a business in the UAE is essential. That is especially true for trademarks, which require more than used to establish a strong foundation for protection in the UAE.
The first person to file a trademark application is assumed to be the legal proprietor under the first-to-file rule in the country. On the other hand, the UAE merely requires that a mark be gone within five years of registration and does not require proof of usage as a prerequisite.
It is financially prudent to assess and choose the trademarks one wants to have protected in the UAE because the official trademark registration fees are relatively high. The nation currently requires a separate application for each class of goods or services. That will allegedly change in 2022 when multiclass filing is to be adopted.
Both Latin and Arabic scripts are acceptable for filing trademark applications, although it is receiving that you register both. Usually, there are multiple different ways to transliterate a particular mark.
Getting the dual version registered in your name is advisable to prevent others from registering a slightly different signature variation. There are more registration requirements compared to many other major markets, which results in higher expenses.
For example, a foreign applicant must appoint a local trademark agent using a power of attorney that has been notarised, legalized by the UAE embassy in the applicant’s country, and then super-legalized by the UAE Ministry of Foreign Affairs.
As of December 28, 2021, the UAE will join the Madrid System of the World Intellectual Property Organization (WIPO), providing a potential alternative to this process. The above-mentioned local agent will only be required if denial or objection submit by foreign applicants who are citizens of, have their primary residence in, or have an industrial or commercial establishment in one of the Madrid Member States.
Regarding patents, the UAE just introduced a grace period for applications published before filing. However, because it would only apply to the UAE, applicants are recommended to continue protecting their innovations before becoming public by using the national or Patent Cooperation Treaty (PCT) channels.
Applications for patents from the Gulf Cooperation Council (GCC) are still on hold and are getting ready to be available again. Furthermore, partnerships with local partners are a prevalent trait of foreign companies functioning in the UAE market.
Companies frequently work through local agents in place of building their own company or branch. It’s significant to note that this arrangement raises particular IPR concerns. Registering your IPRs in your name is the most urgent collaboration task.
Leaving this to the local agent, importer, or distributor if the connection ends puts your company at risk. Even though getting your IP assets back is usually achievable, doing so could require a costly, protracted legal battle.
IPR use, exploitation, and enforcement after registration
When a trademark is registered, it is vital to use it immediately because failing to do so for more than five years leaves the mark open to cancellation requests from third parties. As a result, you should keep dated copies of all commercial communications, such as imports, sales, advertising, and media campaigns, to properly document the use of your brand. In the event of disagreements over the ownership and validity of your trademarks, this will produce solid legal evidence.
Suppose a trademark has become the widely used name for the goods or services it protects. In that case, that is another, albeit rare, circumstance under which it may be subject to cancellation (“socializing”).
Marks, such as trademarks, should be used correctly by the owner and their partners and not as broad terms. If one is concerned about their brands becoming genericized, it is updated to use the ® symbol with registered marks and launch awareness-raising marketing initiatives.
Additionally, employing IPRs through third parties (agents, importers, distributors) must be done by a formal agreement that clearly defines the rightful owner. For a predetermined duration in the UAE, the local distributor may be allowed permission to use the IPRs. The owner must obtain particular credit for any use and goodwill.
Commercial agency, distribution, or licence agreements should be registered with the appropriate authorities to make them instantly enforceable. As it will produce proof of exclusivity, this registration will also aid in lawfully taking action against unwelcome parallel or grey imports.
Should take Similar care to ensure that non-disclosure agreements (NDAs) with (potential) business partners are in place to protect sensitive information about IPRs. Premature disclosure may not satisfy the novelty requirement for getting a patent, which is particularly significant in the context of patents.
Similar to licence agreements, all changes in IPR ownership, including a difference in the owner’s name or address and the assignment of IPRs, should be immediately reported to the IP Office for clarity and to avoid interfering with the potential of rapid enforcement actions.
Additionally, it is a guide to hiring a trademark monitoring service to keep track of any new filings in the nation so that it can make opposition to infringement-related trademark applications as soon as possible.
Last, it’s crucial to have a solid anti-counterfeiting plan. Five of the seven Emirates allow brand owners to register their registered trademarks with the customs authorities so that goods that violate their trademark rights are alone from incoming shipments. For instance, the Department of Economic Development in the Emirate of Dubai can register brands and monitor the Dubai market for contraband goods. If there are infringements, it is crucial to respond quickly to prevent more harm because prolonged inaction may be seen as a concession, making it more difficult to enforce one’s rights in the future.
As we’ve seen, entering the lucrative UAE market presents some unique IP problems. However, IP owners can feel secure in protecting their rights with the appropriate strategy and robust security measures.
IP Docketers’ & Associates is committed to providing the most significant protection for all our client’s intellectual property worldwide. At every stage of IPR filing and prosecution in the nation and the region, our devoted staff in the UAE is ready to help you.