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Federal Law No. ( ) of 2021
On the Regulation and Protection of Industrial Property Rights
We, Khalifa bin Zayed Al Nahyan, President of the United Arab Emirates,
Pursuant to the perusal of the Constitution;
The Federal Law No. (1) of 1972 On the Mandates of Ministries and Powers of Ministers, as amended;
The Federal Law No. (1) of 1979 on the Regulation of Industry Affairs;
The Federal Law No. (5) of 1985 on the Promulgation of Civil Procedures Code, as amended;
The Federal Law No. (11) of 1992 on the Promulgation of Civil Procedures Code, as amended;
The Federal Law No. (18) of 1993 on the Promulgation of Commercial Transactions Code, as amended;
The Federal Law No. (17) of 2002 on Regulation and Protection of Industrial Property of Patents, Industrial Drawings and Designs, as amended;
The Federal Decree Law No. (2) of 2011 on the Establishment of the National Emergency, Crisis and Disasters Management Authority, as amended;
The Federal Law No. (4) of 2012 on the Regulation of Competition;
The Federal Law No. (2) of 2015 on Commercial Companies, as amended;
The Federal Law No. (19) of 2016 on Combatting Commercial Fraud;
The Federal Law No. (8) of 2019 on Medical Products, Pharmacy Profession and Pharmaceutical Establishments;
The Federal Decree No. (21) of 1975 on the Accession of the UAE to the World Intellectual Property Organization;
The Federal Decree No. (20) of 1996 on the Accession of the UAE to the Paris Convention for the Protection of Industrial Property;
The Federal Decree No. (21) of 1997 on the Accession of the UAE to the World Trade Organization;
The Federal Decree No. (84) of 1998 on the Accession of the UAE to the Patent Cooperation Treaty; and
In accordance with the proposals of the Minister of Economy, as approved by the Council of Ministers and the Federal National Council and attested by the Federal Supreme Council;
We do hereby enact the following Law:
CHAPTER ONE
Definitions and General Provisions
Article (1) Definitions
In application of this law, unless the context requires otherwise, the following words and terms shall have the meaning assigned to each of them:
| State | : | United Arab Emirates. |
| Ministry | : | Ministry of Economy. |
| Minster | : | Minister of Economy. |
| Committee | : | Petition Committee created by the resolution of the Council of Ministers. |
| Court | : | Abu Dhabi Federal Court of Appeal. |
| Centre | : | The Ministry’s Internarial Centre for Patent Registration. |
| Industrial property | : | The rights related to patent, utility certificate, design, integrated circuit, and undisclosed information. |
| Protection deed | : | The document validating the granting of protection by the Ministry to invention, industrial design, or integrated circuit layout. |
| Invention | : | An innovative idea conceived by an inventor in any technical field in relation to a product, a method of manufacturing, or both of them, in a way that practically leads to new addition or a solution to a specific problem in such field. |
| Patent | : | The protection deed granted by the Ministry to invention. |
| Utility certificate | : | The protection deed granted by the Ministry to inventive step that is insufficient to qualify for patent eligibility. |
| Industrial design | : | Any two-dimensional or three-dimensional ornamental or decorative creation giving a specific design that may be utilized as an industrial or handcraft product. |
| Industrial design certificate | : | The protection deed granted by the Ministry to an industrial design. |
| Integrated circuit | : | Any product, in its final form or an intermediate form, in which the elements- at least one of which is an active element- are fixed on a piece of isolating material, with some or all of the interconnections forming an integrated formation which is intended to perform a specific electronic function. |
| Layout certificate | : | The protection deed granted by the Ministry to each threedimensional arrangement prepared for an integrated circuit and intended for manufacturing. |
| Mandatory license | : | The license granted to a natural or corporate person for the utilization of a patent, utility certificate, industrial design, layout or integrated circuit within the State without the need to obtain the approval of the right holder or the industrial property right licensee. |
| Industrial Property Bulletin |
: | The periodic Industrial Property Bulletin circulated by the Ministry to publish all the items required to be published by this Law or its Executive Regulations. |
| Registration agent | : | The agent recorded in the Ministry’s Registration Agent List. |
| International application | : | The application submitted to the Ministry to obtain a patent under the International Patent System of the Patent Cooperation Treaty. |
| Application Admission Office |
: | The national Office where international application is admitted, which shall in turn refer the application to any other authority as prescribed by the Patent Cooperation Treaty. |
| Register | : | The Register maintained by the Ministry to register industrial property rights therein. |
This Law is aimed at the following:
- The protection of industrial property and regulation of the procedures of their registration, use, utilization and assignment to promote knowledge and innovation in the State.
- The reinforcement of the State’s competitiveness in the field of industrial right protection in line with the international best practices.
Scope of Application
- This Law shall apply to patents, industrial designs, integrated circuits, undisclosed information and utility certificates recorded in the State inclusive of free zones.
- The provisions of this Law shall not prejudice the provisions of agreements or conventions to which the State is a party and which regulate the rights of the citizens of other parties thereto as well as the rights of persons who have similar rights under such agreements and conventions.
- Foreigners shall have similar rights to those granted to citizens by this Law provided that such foreigners are citizens of a state that reciprocates the same treatment with the State.
Independent Rights
Industrial property obtained in the State shall be independent of industrial property obtained for the same invention in other countries, whether members of the Paris Convention for the Protection of Industrial Property or not.
CHAPTER TWO
Inventions
Part One
Patent and Utility Certificate
Article (5)
Conditions of Patent Eligibility
- Patent shall be granted for each novel invention resulting from innovative idea or innovative improvement, which involves inventive step and is susceptible of industrial application.
- Patent shall be granted independently for any novel application, modification, improvement or addition related to a previously patented invention if it meets the conditions provided for in this Law.
- An invention shall be considered new if it is not preceded by any earlier technology previously disclosed to the public in writing or orally, through use, or by any other means which have made such invention known before the date of filing the patent application or of the legally claiming priority.
- Disclosure of the invention by the inventor or a third party shall not be taken into consideration if such disclosure takes place during the previous 12 months before the date of filing the patent application.
- Invention shall be considered to involve inventive step if, according to an ordinary person versed in the relevant profession, it is not an intuitive procedure as a result of earlier technology related to the patent application.
- An invention is considered to have an industrial application if it can be manufactured or used in any field.
Cases of Utility Certificate Eligibility
- Utility certificate shall be granted to any new invention that has industrial application but has not been resulted from an inventive step that is sufficient to qualify for patent eligibility.
- Utility certificates shall be granted to any inventions that meet the conditions provided for in Article (5) of this Law if requested so by patent applicants or their legally appointed representatives who want to limit their application to utility certificate.
- Patent office, upon the request of the inventors, registration agent, or permitted assignees as per Article (9) of this Law, may convert utility certificate to patent application or vice versa
Article (7)
Cases of Patent or Utility Certificate Ineligibility
- Patents or utility certificates shall not be granted for any of the following:
- Plant and animal researches and species or biological methods of plant and animal breeding, with the exception of microbiological methods and their products in accordance with the Executive Regulations of this Law.
- Diagnostic methods, medications, and surgical operations related to the treatment of humans and animals.
- Scientific principles, discoveries and theories and mathematical methods.
- Plans, rules, software, methods of carrying out commercial activity, performing pure mental activity, or playing games.
- Natural materials even if purified or separated from natural resources, with the exception of methods of purifying or separation of such natural materials from their natural resources.
- Inventions the use of which would violate public order or public morals or inventions that are harmful to the life, environment, or public health.
- If the Ministry discovers upon reviewing the patent application that the relevant invention relates to security or defense industry, the procedures stipulated in the Executive Regulations of this Law shall be applicable.
Cases of Right Holder Determination
- The name of inventor shall be specified in the patent of utility certificate application, unless the inventor requires otherwise in writing.
- Without prejudice to the provisions provided for in Article (10) of this Law, the inventors or their legal successors shall have the rights to the inventions.
- If the basic elements of the invention related to the application are derived from other person’s invention, all rights related to the invention shall belong to such other person being the original inventor.
- If more than one person jointly take part in achieving an invention, the right shall belong to them jointly. A person whose effort is limited to helping in the creation of the invention without any contribution by any inventive step shall not be considered as an inventor.
- Without prejudice to the provisions provided for in Articles (9) and (10) of this Law, if more than one person create the same invention independently, the relevant patent or utility certificate shall be given to the first to apply for such patent or utility certificate or claim priority regarding the same invention as applicable, provided that such applicant shall meet the required conditions.
Application for Patent or Utility Certificate
If a person who is not entitled to an invention applies to a patent or utility certificate, the right holder of the invention as per Article (101) of this Law may apply to the Ministry to transfer the application, the patent or the utility certificate to himself.
Article (10)
Invention under Agreement
- If an invention is created under an agreement or similar assignment, the right in such invention shall belong to the employer unless it sis agreed otherwise. Anny patent application submitted by the employee within two years after the termination of employment shall be deemed to be submitted during employment.
- If such an invention has economical value that considerably exceeds the expectations of the two parties upon executing the agreement, the inventor shall be entitled to additional compensation as determined by the Court unless the two parties agree on a specific additional payment.
Mis-typing of 8
- If an employee, whose employment agreement does not require any inventive activity, achieves an invention related to the field of activity of employer, using the expertise, documents, tools, raw materials provided by employer in the context of performing employment duties, entitlement to such invention shall belong to the employee four months after the date of report to be presented pursuant to Clause (4) below to the employer about the invention or any other date on which the employer becomes aware of such an invention in other way, if the employer during which does not inform the employee in writing about his intention to acquire the invention.
- Inventing employee under agreement of similar assignment shall report the invention in writing to the employer immediately after the achievement of such invention.
- If the employer notify the employee about his intention to acquire the invention within the period stipulated in Clause (3) above, the entitlement to the invention shall be deemed to belong to the employer starting from the date of invention achievement. In such case, the employee shall be entitled to a fair compensation taking into consideration the economic value of such invention and any benefit to the employer thereof. If the two parties do not reach an agreement on such compensation, the Court shall determine the same.
- Any agreement that denies compensation to the employee shall be invalid.
Conditions of Patent or Utility Certificate Application
- Patent or utility certificate application shall be submitted to the Ministry by the inventor, registration agent or assignee of invention rights as per Article (8) of this Law through explicit request to be presented in accordance with the Executive Regulations of this Law after payment of applicable fees.
- The application shall include the names of applicant, inventor and registration agent, if any, as well as an acknowledgement reasoning the applicant’s entitlement to the invention if applicant is another person other than the inventor.
- The application shall include the name, summary and detailed description of the invention in addition to one or more protection element and illustration of it, if any.
- The summary shall be used for the purpose of general information of technological or technical nature only and may not be used for the explanation of the application.
- The invention description needs to be in the best possible format at the time of application submission or on the priority date so it can be realized by a professional possessing specialized knowledge in that field.
- The application shall decide on the element (s) of protection related to the requested protection. Illustrations may be used to explain the same if necessary.
- The elements of protection must be clear, concise and totally based on the description.
- The application and attachments thereof shall be submitted in Arabic and English. If one of the two version is not submitted, it shall be provided within the time limit specified in the Executive Regulations of this Law.
- The applicant shall provide the Centre with any relevant additional information and data as required within ninety (90) days from being notified accordingly.
- The applicant may introduce any changes to the application if such changes shall not apply to the substantial information included in the original application.
- Executive Regulations of this Law shall provide for the application’s attachments as well as the time limits to provide them.
Priority Based on a Previous Application Overseas
- Applicants may request to benefit from right of priority if they have filed previous requests in a country that is a party to an agreement or convention executed with the State. In such case, the application shall include the date and filing number of the previous request and the country in which it has been filed, in accordance with the Executive Regulations of this Law.
- The period or priority shall be twelve (12) months starting from the date of the first filing.
Examination of Patent or Utility Certificate
- After payment of the applicable fees by the applicant, the Ministry shall examine the application of patent or utility certificate. In doing so, the Ministry may require additional submissions as it deems necessary in accordance with the Executive Regulations of this Law. If such additional submissions are not provided within ninety (90) days from the date of notifying the applicant accordingly, applicant shall be considered to have assigned the application.
- If the invention meets the conditions required by this Law and its Executive Regulations, the Ministry shall publish the approval of the application in the Industrial Property Bulletin in the way prescribed in the Executive Regulations of this Law.
Urgent Application
Upon the request of applicants, the Ministry may examine certain urgent applications of patent or utility certificate before other applications regardless of application submission dates or examination application dates, provided that this shall not prejudice priority applications in accordance with the conditions and criteria stipulated in the Executive Regulations of this Law.
Article (15)
Related Inventions
- Application referred to in Article (11) of this Law may be related to a single invention or a group of related inventions in a way that make them one general inventive concept. Appropriate decision on applications including more than one invention shall be taken in accordance with the Executive Regulations of this Law.
- If it is established, after the issuance of patent or utility certificate, that the conditions of related inventions are not met in accordance with (1) above, this shall not be deemed as a reason to invalidate the patent or utility certificate.
Splitting of Patent or Utility Certificate Application
- Applicants of patent or utility certificate applications including more than one invention may split their applications into more than one applications to the limit provided for in the description or illustrations attached with their first application.
- Applications split in accordance with this Article (16) shall be deemed as have been submitted on the same date as of the first patent application in accordance with the Executive Regulations of this Law.
Procedures of Granting and Data of Patent or Utility Certificate
- The Centre shall grant patent or utility certificate and publish the same in the Industrial Property Bulletin in accordance with the powers and procedures provided for in the Executive Regulations of this Law.
- Following their entry in the Register, the patent or utility certificate shall be delivered to the right holder if no objection to the same is submitted through reexamination application or petition within the time limits provided for in the Executive Regulations of this Law. The patent or utility certificate shall include the registration number, date of issuance, evidence of registration or renewal fee payment, and other data as provided for in the Executive Regulations of this Law.
Duration and Fees of Patent and Utility Certificate
- Patent shall be valid for twenty (20) years and utility certificate shall be valid for ten (10) years starting from the date of application submission.
- Applicant or holder of patent or utility certificate shall pay annual fees applicable to the patent or utility certificate registration throughout the applicable duration of protection in accordance with the controls and procedures provided for in the Executive Regulations of this Law.
- The Executive Regulations of this Law shall determine the procedures and conditions of revalidating the patent or utility certificate applications for which applicable fees have been delayed or not paid in accordance with (2) above.
Rights Conferred by Patent or Utility Certificate
A patent or utility certificate shall confer on its holder the following:
- The right to utilize the invention. Any of the following shall be deemed as utilization of the invention:
- If the subject matter of the patent or utility certificate is a product, the holder of the patent or utility certificate shall have the right to manufacture, use, offer for sale, sell and import it for such purposes. The holder of the patent or utility certificate shall moreover have the right to prevent third parties from manufacturing, using, offering for sale, selling or importing the product for such purposes without obtaining his prior consent to do so.
- If the invention involves an industrial process or a manufacturing method of a certain product, the patent holder shall have the same right with respect to the direct product of such process or method. In addition, the holder shall have the right to exploit such process or method and prevent third party without obtaining his prior consent from the actual exploitation of the method or from using, offering for sale, selling, importing of the direct product of such method for such purposes.
- The right to use the method and conduct any activities prescribed in (a) (1) above with respect to any product directly derived through such method if the patent or utility certificate is granted for a method or a novel application of a known industrial method or process.
- The rights prescribed in (1) above shall be limited to activities conducted for industrial or commercial purposes only and shall not cover activities related to the product after its sale.
Invention Product Manufacturing or Method Using in Good Faith
If a person, in a good faith, manufactures or uses the product or the method of the invention or undertakes serious steps for such manufacturing or usage in the State before the date of filing the application for protection by another person, or at the date of the legally claimed priority in respect of this application, the first person shall have the right to continue conducting such activities without any further expansion, despite the granting of patent or utility certificate. Such right of using shall not be transferred to third party other than the right holder.
Article (21)
Assignment of Patent or Utility Certificate and Its Conditions
- Patent or utility certificate or the application thereof may be assigned to third party.
- Assignment of patent or utility certificate or the application thereof shall be in writing and signed by all contracting parties before the Ministry, authenticated by the Notary Public, or duly attested in the State.
- Assignment shall be recorded in the Register after payment of the applicable fee.
- The Ministry may not register the assignment in the Register if such assignment may lead to the abuse of any of the industrial property rights or compromise commercial competition or any other related issue as stipulated in the Executive Regulations of this Law.
Rights Not Covered by Patent or Utility Certificate Rights conferred by patent or utility certificate shall not cover the following:
- Activities relating to education and scientific research.
- Use of the subject matter of a patent or utility certificate for transportation means being introduced to the State on temporary or irregular basis whether such a use is intended for the body structure, machines, equipment, tools or other parts of the said means, provided that their use restricted only to the needs of such means.
- Combining more than one medication for the purpose of medical treatment by a licensed pharmacist.
Individual Disposal by One of Patent or Utility Certificate Holders
- Any one of joint holders of patent or utility certificate may individually assign his share in the invention protected by patent or utility certificate, to utilize it, and to exercise his rights granted to him by Article (19) of this Law unless it is agreed otherwise, provided that such action shall not harm other joint holders.
- No joint holder of patent or utility certificate shall have the right to grant licenses to others for using the invention without agreement among joint holders.
Hypothecation of Patent or Utility Certificate
Patent or utility certificate may be hypothecated in accordance with controls and procedures provided for in the regulations applicable in the State.
Part Two
Mandatory Licenses
Article (25)
Conditions for Granting Mandatory Licenses
- If the holder of patent or utility certificate does not use it at all or has made insufficient use of it during the following three years after granting the same, any interested party may apply for a mandatory license in accordance with procedures provided for in Article (29) of this Law if such interested party meets the following conditions:
- The applicant shall demonstrate making efforts during reasonable period to obtain a license from the patent or utility certificate holder against reasonable price and under reasonable commercial conditions. The Executive Regulations of this Law shall provide for the procedures required in this regard.
- The applied license shall not be exclusive.
- The license shall be intended to meet the needs of the local market. The Executive Regulations of this Law shall provide for the guarantees that the applicant shall be obliged to offer with respect to the sufficient use of the invention, remedy the deficiencies, or meet the needs that have led to the application for the mandatory license.
- The licensing resolution shall determine the scope and duration of the license in accordance with the purpose for which it has been granted. It may include also commitments and controls applicable to licensor and licensee.
- The holder of patent or utility certificate shall be entitled to a fair compensation.
- The use of the invention shall be restricted to the licensee and shall not be transferable to third party unless the ownership of the establishment or the ownership of the part thereof that uses the invention is transferred and the Court approves such transfer of license.
- Provisions of Article (29) and (35) of this Law shall be applicable to mandatory license transfer application.
- If the invention is related to semi-conductors, mandatory license may be granted only for public and non-commercial purposes or to rectify practices that has been decided to be non-competitive based on judicial or administrative proceedings.
- Mandatory license shall not be granted if the holder of patent or utility certificates offers plausibly justifies his position.
Rights of Mandatory License Holder
- The mandatory license shall give its holder the right to exercise some or all of the activities stated in Article (19) of this Law in accordance with the conditions of the license.
- The holder of the mandatory license shall be entitled to exercise the civil and penal rights granted to the holder of patent or utility certificate to protect himself from abuse should the holder of patent or utility certificate remains inactive after being aware of or notified about any illegal act.
Multiple Mandatory Licenses
The issuance of a mandatory license shall not preclude issuance of other mandatory licenses.
Article (28)
Exceptions to the Conditions of Mandatory Licenses
The Court may not accept the requirement provided for in Article (25) of this Law if the mandatory license application is resulting from a case of emergency, crises, disaster, public urgent need or non-commercial purposes.
Article (29)
Procedures of Mandatory License before the Court
- The mandatory license application shall be submitted to the Court in the form of a lawsuit, in which the applicant complains against the holder of patent or utility certificate. The Centre shall be notified to appoint a representative thereof to attend the proceedings. The Court may give the two parties a time limit as it deems fit to reach a mutual agreement. The time limit may be extended if such an extension is justified by the Court.
- Upon the expiry of the said time limit provided for in (1) above, the Court shall decide on the application by rejection or approval. If approved, the Court shall decide on its conditions, scope and field as well as the compensation due to the holder of patent or utility certificate in accordance with Article (25) of this Law.
- Once the judgement provide for in (2) above is final, the licensee shall notify the parties and the Ministry about the judgement. The Ministry shall enter it in the Register and publish it in the Industrial Property Bulletin after payment of the applicable fee. The judgement shall come into force versus third parties starting from the date of the publication thereof.
Issuance of Mandatory License for the Purpose of Public Interest
A mandatory license to exploit an invention protected by a patent or utility certificate may be issued by a decision of the Minister or his authorized deputy if such invention is important for the public interest, in accordance with the conditions provided for in Article (25) of this Law, with the exception of the time limit condition and Clause (a) (1) therein. Such decision by the Minister shall be published in the Industrial Property Bulletin.
Article (31)
Issuance of Mandatory License to Exploit Patent or Utility Certificate
- If an invention protected by a patent or a utility certificate cannot be exploited in the State without prejudice to rights derived from patent or a utility certificate granted based on a previous application, the holder of the subsequent patent or utility certificate may be granted a mandatory license upon his request in accordance with the provisions of Clauses (c) and (e) (1) of Article (25) of this Law, to the extent necessary for the exploitation of his invention, if this invention serves industrial purposes different from those of the subject matter invention of the previous patent or the utility certificate, or constitutes a remarkable technical improvement to him.
- If a mandatory license is granted in accordance with Clause (1) above, the holder of the previous patent or utility certificate may obtain a mandatory license for the subsequent patent or utility certificate whenever requested.
- The mandatory license granted to the holder of the subsequent application may not be assigned to others except by assignment of the subsequent patent.
Amendment the Conditions and Cancellation of Mandatory License
- The Court or the Minister, as applicable, may amend the conditions of the mandatory license upon the request of the holder of patent or utility certificate or the licensee, if such amendment is justified based on new facts, in particular, if the holder of patent or utility certificate is granted a contractual license with more favorable conditions than the conditions of the mandatory license.
- The Court or the Minister, as applicable, may revoke the mandatory license based on the request of the holder of patent or utility certificate if the licensee does not observe the conditions of the license or if the reasons that has justified such granting have ended. In such case, the licensee shall be granted a reasonable grace period to stop exploiting the invention if the immediate termination entails gross damage to the licensee.
Registration and Publication of Mandatory License
- Mandatory licenses and related issuances shall be recorded in the Register and published in the Industrial Property Bulletin after payment of applicable fees in accordance with the Executive Regulations of this Law.
- Licenses issued in accordance with Article (30) of this Law shall be exempted from fees if government authorities exploit the invention.
Patent or Utility Certificate Abandonment and Cases of Invalidating Each of Them
Article (34)
Conditions and Procedures of Patent or Utility Certificate Abandonment
- The holder of patent or utility certificate or the licensee may abandon the same it by a written notification to the Ministry. The holder shall furthermore notify any party related to the patent or utility certificate of his intention to abandon them.
- The abandonment may be limited to one or more rights conferred by the patent or utility certificate. Such abandonment shall not prejudice the rights of third parties, unless such third parties have abandoned them in writing and shall be recorded in the Register. The abandonment shall come into force versus third parties starting from the date of the publication thereof in the Industrial Property Bulletin.
Lawsuit to invalidate the grant of patent, Utility Certificate or Mandatory License
- Any interested party may request the Court to invalidate the grant of the patent, utility certificate or mandatory license if the same are granted without fulfilling the grant conditions provided for in this Law or its Executive Regulations.
- The holder of patent, utility certificate or compulsory license, the Ministry, and everyone who has a right to any of the same shall be notified of the judgement made pursuant to Clause (1) above. The judgement shall be published in the Industrial Property Bulletin.
Article (36)
Situation Reconciliation Following the Issuance of Invalidation Judgement
Subject to the provisions of Article (32) of this Law, the judgment totally or partially invalidating the decision to grant a patent, utility certificate or license shall be deemed effective on the date of granting. Nevertheless, the awarded party shall not be obligated to refund any royalties obtained in exchange for the exploitation of the invention or the mandatory license. The invalidation judgment shall be noted in the Register and published in the Industrial Property Bulletin.
Part Four
International Patent Application
Article (37)
International Applications
The Ministry shall receive international applications in accordance with the Patent Cooperation Treaty. The Executive Regulations of this Law shall regulate the conditions and procedures to be followed in this regard.
Article (38)
Fees applicable to International Phase and National Phase of International Applications
The provisions of the Patent Cooperation Treaty shall govern the fees applicable to the international phase procedures of international applications.
The fees and procedures for the national phase of international applications are subject to the provisions of Articles (11) and (18).
CHAPTER THREE
Industrial Designs
Article (39)
Protection of Copyrights and Artistic Rights Related to Industrial Designs
The protection provisions stipulated in this Law in relation to industrial designs are without prejudice to the copyrights and artistic rights related to them, whether the source of such rights is the law or international agreements and treaties to which the State is a party.
Article (40)
Registration of Industrial Design
An industrial design does not enjoy the protection provided for in this Law unless it is recorded in the Register. The Executive Regulations of this Law shall determine the procedures for submitting and examining the registration application.
Article (41)
Multiple industrial Designs in the Protection Application
The protection application may include more than one industrial design. Such multiple designs must belong to the same category of the international classification in accordance with the stipulations of the Executive Regulations of this Law.
Article (42)
Industrial Design Filing Priority
- The Provision of filing priority shall apply to industrial design provided for in Clause (1) of Article (12) of this Law.
- The priority period shall be (6) six months from the date of the first filing.
Conditions of Industrial Design
- The industrial design must be novel.
- The industrial design may not be used commercially if it violates public order or public morals.
- An industrial design is considered novel unless it has been disclosed to the public by publication, use, or any other method prior to the date of application filing.
- For the purposes of this article application, the industrial design shall not be deemed as being disclosed to the public as long as such disclosure is made within a year prior to the date of the application.
Examination Application Procedures of Industrial Design
- The Center, after payment of the applicable fee, shall examine the industrial design application. The Centre may require additional submissions as it deems necessary in accordance with this Law and its Executive Regulations. If such additional submissions are not provided within ninety (90) days from the date of notifying the applicant accordingly, applicant shall be considered to have assigned the application.
- The industrial design must meet the conditions required by this Law and its Executive Regulations and the Ministry shall publish the approval of the application in the Industrial Property Bulletin.
- The Executive Regulations of this Law shall provide for the requirements and procedures of examination and the way of publication.
Duration of Protection and Fees Payment
- The protection of industrial design shall be valid for twenty (20) years starting from the date of protection application submission.
- Applicant or holder of industrial design shall pay annual fees applicable to the industrial design registration throughout the whole applicable duration of protection in accordance with the controls and procedures provided for in the Executive Regulations of this Law.
- The Executive Regulations of this Law shall determine the procedures and conditions of revalidating the industrial design applications for which applicable fees have been delayed or not paid in accordance with (2) above.
Rights Conferred by the Industrial Design Certificate
- The protection applicable to industrial design in accordance with this Law shall confer the right to prevent third parties from doing any of the following:
- Using the design in the manufacturing of any product.
- Importing and product related to the industrial design or holding it to use it for commercial purposes, offering it for sale or selling it.
- The activities set out in Clause (1) above shall not be deemed legitimate just because their field differs from the field of the industrial design that is protected by the Law or because they relate to a product that differs from the industrial design covered by the protection deed.
Rights Not Covered by Industrial Design Certificate 1. Rights conferred by Industrial design certificate shall not cover the following:
-
- Activities relating to education and scientific research.
- Use of the subject matter of an industrial design certificate for transportation means being introduced to the State on temporary or irregular basis whether such a use is intended for the body structure, machines, equipment, tools or other parts of the said means, provided that their use restricted only to the needs of such means.
Article (48)
Rules of Industrial Design where Specific Provisions Are Not Available
Industrial design shall be subject to the provisions of this Law regarding patent and utility certificate where no specific provisions are provided in this Chapter.
CHAPTER FOUR
Contractual Licenses
Article (49)
Conditions of Contractual Licenses
The holder of the protection deed may grant a license to any natural or corporate person to use or exploit the right subject of protection, provided that the license period shall not exceed the duration of protection established under the provisions of this Law. The contractual license must be in writing and signed by the parties.
Article (50)
Common Provisions Related to Industrial Design, Patent and Utility Certificate
The holder of the protection deed shall enter the contractual license in the Register after payment the applicable fee. The Ministry note it in the Register. The license shall come into force versus third parties starting from the date of the publication thereof in the Industrial Property Bulletin. The entry shall be written off at the request of the parties to the contract or at the expiry of its term.
Article (51)
Contractual License Relation to Third Party
The contractual license shall not prevent the holder of the protection deed from exploiting or using the subject matter of the protection by himself or granting further licenses to third parties unless the licensing contract stipulates otherwise.
Article (52)
Rights of Licensee
- In accordance with the provisions of this Law and its Executive Regulations, the licensee has the right to exploit and use the licensed subject matter in all of the State’s territories, including free zones, throughout the duration of legal protection in all fields and by all means, unless the licensing contract stipulates otherwise.
- The licensee shall have the right exercise the same rights granted by the protection deed to its holder to prevent any infringement on, threat, or harm to the subject matter of protection.
- Any of the licensor or the licensee may take the necessary legal measures and actions to protect their own right.
Assignment of Contractual License
It is not permissible for the licensee, other than in the case of assigning the establishment or transferring its ownership in whole or in part, to assign the license or grant sub-licenses to third parties, unless the contractual license stipulates otherwise.
Article (54)
Monitoring of Contractual License
- The contractual license or its assignment and any amendment or renewal of its contracts shall be subject to the Ministry’s monitoring in terms of conditions, guarantees and rights conferred by the protection deeds.
- The Ministry may reject the registration of the contractual license if it includes any misuse of any industrial property right or compromise commercial competition with regard to the subject matter of the contractual licensing in the State. The Ministry may request the holder of the protection deed to amend the terms of the contractual license to eliminate the reasons for rejection in accordance with the provision of the Executive Regulations of this Law.
Integrated Circuit Layouts
Article (55)
Conditions of Integrated Circuit Layout Protection
- The layouts of integrated circuits shall enjoy protection according to the provisions of this Law if they are original, resulting from an intellectual effort exerted by their holders and not parts of the common knowledge among professionals in the industrial domain concerned.
- A layout shall be considered original if the coupling of its components and interconnection among each other is original in itself, even though the components that compose it may fall within the common knowledge among professionals in the industrial domain concerned.
Components of Non-Protected Integrated Circuit Layout
Any concept, method, technical system or coded information that a layout of integrated circuits may include shall not be protected.
Article (57)
Prohibitions on the Use of Integrated Circuit Layouts
Without prior written consent from the holder of the right to the protected layout, it shall not be permissible to any natural or corporate person to conduct any of the following actions:
- Copying the layout in whole or any original part of it, whether such copying is made by incorporating it into an integrated circuit or by any other way.
- Importing, selling or distributing the layout for commercial purposes, whether separately, incorporated in an integrated circuit or as a component of a product.
Permissible Actions without License
Without prejudice to the protection provisions stipulated in this Chapter, any natural or corporate person may conduct, without a license from the right holder, any of the following actions:
- Reproduction or commercial exploitation, including the import, sale or distribution, of an integrated circuit containing a protected layout or of a product in which such integrated circuit is used if such action is conducted by a person who does not know or has not been able to know at the time of the such action that the integrated circuit or product includes a protected layout. In such case, the holder may dispose of his stock of products or the products for which an order has been made in exchange of a fair compensation to the right holder.
- Personal use or for the purposes of testing, examination, analysis, education, training, or scientific research of a protected layout. If such use results in the creation of a new layout, the inventor shall have the right to protect it.
- Inventing a layout identical to another protected layout as a result of independent efforts.
- Importing a protected layout or an integrated circuit produced using a protected layout, whether such circuit is separate or incorporated into a product, or importing a product containing an integrated circuit that includes a protected layout, whether traded in the State or overseas.
Registration and Protection Duration of Integrated Circle Layouts
- Integrated circuit layout registration applications shall be submitted to the Centre in accordance with provisions of the Executive Regulations of this Law.
- The protection duration for layout of integrated circuits shall be (10) ten years starting from the date of submitting the application or from the date of its first commercial exploitation in the State or overseas, whichever is the earlier.
Common Provisions Related to Integrated Circuit Layout, Patent and Utility Certificate Integrated circuit layout shall be subject to the provisions of this Law regarding patent and utility certificate where no specific provisions are provided in this Chapter.
CHAPTER SIX
Undisclosed Information
Article (61)
Conditions of Undisclosed Information Protection
Undisclosed information shall be protected in accordance with the provisions of this Law and its Executive Regulations if such undisclosed information meet the following:
- Confidentiality, whereby it is not as a whole or in its construction inclusive of its vocabulary known or in general circulation among those professionals working in the industrial domain in which such information fall.
- Such information derive commercial value from being secret.
- Such information relies for its confidentiality on the effective measures taken by its legal holder to maintain privacy.
Scope of Undisclosed Information Protection
- The protection established by the provisions of this Law shall extend to undisclosed information, if such information are the result of considerable efforts, are provided by the concerned person to government authorities upon their request for the purposes of marketing pharmaceutical, agricultural or chemical products, and where the use of new chemical compounds is required for the testing purposes before obtaining marketing approval.
- Governmental authorities that receive undisclosed information are obligated to protect them from unlawful disclosure and commercial use, starting from the date when the information are provided to them until the cessation of confidentiality or for up to (5) five years, whichever is shorter.
- It shall not be considered as an infringement of the undisclosed information holder rights if the competent authorities disclose such information as might be necessary to protect the public.
- The holder of such information or his legal successor shall have the right to assign them against a consideration or for free.
Responsibility of Undisclosed Information Holder
- The legal holder of undisclosed information shall be obligated to take measures ensuring the safety of such information and preventing its circulation among non-specialists.
- The legal holder of undisclosed information shall be obligated to regulate the circulation of this information within the establishment, restricting it to the relevant specialists, and protecting them from being unlawfully disclosed to third parties.
- The legal holder of undisclosed information shall be liable to the infringement of such information by others, unless he establishes that he has exerted sufficient and reasonable effort to protect them.
- The confidentiality of undisclosed information and any resulting rights thereof shall continue toward third parties as long as such information stay undisclosed in accordance with Article (61) of this Law.
Actions Conflicting with Fair Business Practices
- Any of the following acts shall be conflicting with fair business practices and involving illegal competition:
- Bribery of employees of the entity that possesses the information in order to obtain them.
- Incitement to disclose information by employees when they are aware of such information because of performance of their duties.
- If a party to “confidentiality agreements” discloses what he becomes aware of about them.
- Obtaining information from the places where they are kept in using any illegal way, such as theft, espionage, etc.
- Obtaining information using fraudulent methods.
- Use of the information by a third party who receives them as a result of any of the previous actions while knowing their confidentiality status and that they have been obtained through any of said actions.
- Any other actions that are deemed to be conflicting with fair business practices.
- It shall be considered as an infringement of undisclosed information any consequences of the actions set out in (1) above, including the disclosure of information or the possession or use of them by third parties unauthorized by the legal holder of the same.
Actions Non Conflicting with Fair Business Practices Any of the following acts shall not be conflicting with fair business practices:
- Obtaining information from publicly available sources.
- Obtaining the information as a result of independent efforts involving testing, experimentation and analysis of products which are traded in the market and which incorporate the undisclosed information.
- Obtaining information as a result of independent research, innovation, invention, development, improvement or modification made by independent hard working researchers about the holder of the undisclosed information.
- Possessing and using information which is known, available, and circulated among professional in the industrial domain within which the information fall.
Common Provisions Related to Undisclosed Information, Patent and Utility Certificate
Undisclosed information shall be subject to the provisions of this Law regarding patent and utility certificate where no specific provisions are provided in this Chapter.
CHAPTER SEVEN
Claim of Damage, Preventive Measures and Penalties
Article (67)
Entitlement of Protection Deed Holder to Claim Damage
The holder of the protection deed or his licensee, in the event of violation of any of his rights conferred upon him by the protection deed, may claim damage before the Court as a result of actions made in violation of the provisions of this Law.
Article (68)
Lien
The holder of protection deed or the transferee of all or some of the industrial property rights stipulated in this Law shall have the right to request before the Court placing lien on the invention, industrial design, the layout of an integrated circuit, the establishment or any part thereof that exploit any type of industrial property upon the occurrence of any infringement or illegal action contrary to the provisions of this Law or contracts or licenses granted in accordance with its provisions.
Article (69)
Penalties
Without prejudice to any more severe penalty stipulated in any other law, any person provides incorrect or false documents or information to obtain patent, utility certificate, industrial design or integrated circuit layout, whoever imitates an invention or manufacturing process, or whoever knowingly infringes any rights protected by this Law, shall be punished with imprisonment and a fine no less than (100,000) AED One Hundred Thousand and no more than (1,000,000) One Million Dirhams, or one of these two penalties.
Article (70)
- The Court may order the confiscation of seized items and it may order the destruction or removal of the consequences of such unlawful action in addition to the machines and tools used in forgery.
- The Court may order the publication of the judgment in the Industrial Property Bulletin or in one of the daily local newspapers at the expense of the convicted person.
Judiciary Police
The Ministry’s employees who are designated by a decision of the Minister of Justice in agreement with the Minister, shall have the capacity of judiciary police to validate within their jurisdiction any violations of the provisions of this Law, its Executive Regulations and the decisions issued in enforcement thereof.
Article (72)
The Register
The Ministry shall create the Register in accordance with the controls provided for in the Executive Regulations of this Law and the ministerial decisions issued in their regard.
Article (73)
Actions Prohibited for the Ministry's Employees to Perform
The Ministry’s employees, during the period of their service and thereafter, are prohibited from doing any of the following:
- Practicing the profession of registration agents at the Ministry during two years following the end of their service at the Ministry.
- Keeping for themselves in their personal capacity the original of any document or paper or any copies thereof.
- Disclosing their confidential business information or any other data or information that they have obtained while performing their jobs, or using the same for their own benefits or for the benefit of third parties and based on the request of the judicial authorities.
Petition and Objection
- A committee formed by a decision of the Council of Ministers chaired by one of the judges based on a nomination by the Minister of Justice, and two experts in the field of industrial property rights, provided that none of them is an employee at the Centre. The decision shall specify the committee's work system, term, remuneration of its members, procedures of grievance before it and making decisions on such grievances.
- The Minister appoints or delegates one of the Ministry’s employees to assume the duties of the committee’s secretary. Such secretary while performing his duties shall observe the instructions of the chairperson.
- The committee shall decide on the grievances submitted by the concerned parties regarding the decisions issued while enforcing the provisions of this Law and its Executive Regulations.
- The committee shall hear the grievance after the payment of the applicable fee.
- Subject to the provisions of Clause (2) of Article (17) of this Law, the committee shall hear the grievance related to the registration of a patent, utility certificate or industrial design only after the person concerned has objected before to the Centre by applying for a post-granting reexamination.
- The Executive Regulations of this Law shall determine the controls, procedures and time limit of post-granting reexamination application and deciding on it.
- Subject to Clause (5) above, a lawsuit shall not heard before the Court only after deciding on grievance before the committee.
Conditions Related to the Profession of Registration Agent
- It is not permissible to practice the profession of registration agents except after being registered in the registration agent list at the Ministry and payment of the applicable fee.
- The Executive Regulations of this Law shall specify the conditions that must be met by registration agents, their duties, the provisions or controls related to the practice of the profession, and the administrative penalties that are applicable to them.
Fees
The Council of Ministers, based on the proposal of the Minister of Finance, shall determine the required fees to implement the provisions of this Law and its Executive Regulations.
Article (77)
Executive Regulations
The Council of Ministers, based on the proposal of the Minister, shall issue the Executive Regulations of this Law within six months after the date of its publishing.
Article (78)
Nullifications
- The said Federal Law No. (17) of 2002 shall be null and void.
- Any provisions to the contrary of the provisions of this Law shall be null and void.
Continuity of Regulations and Resolutions
Until the regulations and resolutions required to enforce the provisions of this Law, the regulations and resolutions issued to enforce the said Federal Law No. (17) of 2002 shall continue into effect subject to the provisions of this Law.
Article (80)
Continuity of Regulations and Resolutions
This Law shall be published in the Official Gazette and shall come into force after six months following the date of its publishing.
Cabinet Decision No. 47/2022
On the Implementing Regulation of Federal Decree-Law No. 38/2021 on
Copyrights and Neighbouring Rights
| Type | Law |
| Issued on | 11 May 2022 (corresponding to 10 Shawwal 1443 H) |
| Nature | Cabinet Decision |
| Jurisdiction | United Arab Emirates |
| Lexis |
| ® |
| Middle East |
Document link: https://www.lexismiddleeast.com/law/UnitedArabEmirates/CabinetDecision_47_2022
https://www.lexismiddleeast.com
The Council of Ministers,
Pursuant to the perusal of the Constitution;
Federal Law No. 1/1972 on Competencies of the Ministries and Powers of the Ministers and its amendments;
Federal Decree-Law No. 38/2021 on Copyrights and Neighbouring Rights; and
Acting upon the proposal of the Minister of Economy and the approval of the Council of Ministers, Hereby decides as follows:
Article 1 - Definitions
The definitions set out in the aforementioned Federal Decree-Law No. 38/2021 shall apply to this Decision. However, the following terms and expressions shall have the meanings assigned against each of them, unless the context requires otherwise:Law: Federal Decree-Law No. 38/2021 on Copyright and Neighbouring Rights.
Copyrights Register: The register in which the data and ownership of the work and the particulars of the author, rights holders, or holders of neighbouring rights, as well as all rights or dispositions related thereto shall be entered. Collective Management Organisations: Specialised professional associations or any other bodies to which the holders of copyrights and neighbouring rights assign the economic rights or entrust them to exercise those rights and collect and distribute the financial remuneration thereto.
Collective Management Permit: The permit issued by the Ministry for Collective Management.
Competent Authority: The federal or local government entity concerned with issuing licences, permits, or approvals for works or carrying out activities in accordance with the legislation in force therein.
Article 2 - The Copyrights Register and applications for registration
- The Copyrights Register shall contain all dispositions with respect to rights and related data about the work itself and the author, including exclusive rights, their scope, period of use, assigned purpose, and other such dispositions that are related to the aforementioned rights.
- Works shall be classified for the purposes of the Register in accordance with their nature.
- The application for registration may not contain more than one work, and the type of works shall be taken into consideration.
- The author, or any of the rights holders, or the holders of neighbouring rights, or any of their successors may apply for the registration of the work in accordance with the provisions of this Decision.
- An application for registration of works shall be filed in accordance with the following procedures and provisions:
- Applications for registering the work shall be filed on the Ministry’s website, with payment of the due fees prescribed therefor.
- Subject to Paragraph (a) of this clause, the Ministry shall specify any additional requirements as to the preservation of electronic registers and any other procedures. c- The applicant shall be given a serial number according to the filing date of the application.
- The aforementioned application for registration shall contain the following data and documents:
- The title, type, description, and language of the work.
- The name, nationality, capacity, and address of the applicant and a copy of the power of attorney duly certified and authenticated. c- The author's name, pseudonym (if any), nationality, address, and date of death (if applicable).
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- The name of the entity that directed the work (if any), its address, and the document supporting the relationship between it and the author.
- The name and address of the publisher, the date and place of the first publication, and the international number (if any).
- The name of the transferee, his nationality, address, type of transfer, its duration and geographical scope, and the document that proves the transfer by the author or the right holder. g- Data and details of the work. h- A copy of the passport or identity card of each of the applicant, author, and transferee. i- A copy of the work according to the nature of the work.
- The Ministry shall study the application and verify that:
- The Ministry shall study the application and verify that:
- Where the applicant fails to produce the documents or data as required within a period of (60) sixty days from the date of his notification thereof, the application shall be deemed rejected.
- The Ministry shall study the application fulfilling the aforementioned requirements and issue a certificate of registration of the work after approval of the application.
- The Ministry shall issue a grounded decision rejecting the application if it is found that the work does not meet the conditions stipulated in the Law or that the application is in violation of the provisions of this Decision, with notification of the applicant thereof. A person whose application has been rejected or whose application is deemed to be rejected may file a new application with the Ministry after producing the documents and data that constituted the reason for issuing the rejection decision.
- Subject to Clause (10) of this Article, a grievance may be filed with the Grievance Committee against the rejection decision, within a period of (30) thirty days from the date of the applicant’s notification thereof.
- Notwithstanding the foregoing, the Ministry may, for the purposes of consideration of applications for registration, seek the assistance of specialists it deems appropriate inside or outside the State. The opinion expressed by the specialist shall be considered as advisory to the Ministry.
- The issuance of a work registration certificate shall not be considered a permit for use or circulation thereof, and the person concerned shall complete the requirements prescribed by the Competent Authority in the State as the work registration licence whenever its nature so requires.
Any interested party may request the Ministry to correct any material error in the Register's data.
Article 4 - Dispositions contained in the copyrights register
Dispositions effected in the Copyrights Register shall be documented, as well as the deletion of data entered or registration thereof for a new person based on the consent of the parties or on a final and enforceable court ruling.Article 5 - Importers and distributors of works
- Subject to the provisions of Article (2) of this Decision, the Copyrights Register shall contain all data regarding the names of importers and distributors and the rights related therein, including the document proving their rights to import or distribute works in the country, and data relating to their activities and the authorities that authorised them to import or distribute works as set out in the Register.
- The entry in the Register may include the name of more than one importer or distributor for the same work if the applicant has justifications for this entry.
- Any physical or juristic person may engage in an activity related to works, including importing, distributing, selling, leasing, or lending the same, even if he/it is not registered in the Copyrights Register.
- Registration in the Copyrights Register does not preclude the approval of the Competent Authority or the licensing with the licensing authorities in each emirate to conduct activities in accordance with the rules.
- The application for registration in the Copyrights Register shall contain the following data and documents regarding importers and distributors of works:
- The name of the applicant, his nationality, capacity, place of residence, and address, and the name of the person authorised to sign on his behalf.
- The name, nationality, address, and activity of the physical or juristic to be registered.c- A licence to practice the activity issued by the Competent Authority in the State.
h- The document that proves the legal relationship authorising the work’s import or distribution, indicating the following:
1- The geographical area agreed upon for the distribution of the work.
2- The duration of the work’s financial use.
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- The duration of the work’s financial use.
- Place and date of signing the aforementioned document.
- Official authentication of the document in accordance with the applicable legal principles.
- Legal translation of the document into Arabic if it is written in a foreign language.i- Any other data, documents, or explanations that the Ministry requests and instructs the applicant to produce as it deems appropriate in support of the application and the attached documents.
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- The Ministry may address any party to verify the integrity of the submitted documents or data.7- The Ministry shall study the application and verify that:
- The work is not among those that require a permit from the Competent Authority in the State.b- The application is accompanied by the data and documents mentioned in this Decision.
- Where the applicant fails to produce the documents or data as required within a period of (60) sixty days from the date of his notification thereof, the application shall be deemed rejected.
- In the event that the Ministry accepts an application that is not accompanied by data or documents, the person concerned shall be notified thereof with a statement of the data, papers, or documents required to be clarified or attached, and said person shall produce the same within (60) sixty days from the date of his notification thereof, otherwise the application shall be considered null and void.
- The Ministry may not accept the registration of any applications after a period of (60) sixty days.
- The Ministry shall reject the application if it is in violation of the provisions of the Law or this Decision, and the person concerned shall be notified thereof.
- The person concerned may file a grievance against the rejection decision with the Grievance Committee within a period of (30) thirty days from the date of his notification thereof.
- If the application is accepted, the types of rights granted, their duration, the number of works, their names, their language, and the geographical scope of their use shall be registered, and the Ministry issues the certificate.
- The Ministry may, by a grounded decision, request the Competent Authority in the State to cancel of the certificate for offering the work for circulation.
Article 6 - Notification of updates and modifications
Persons whose names are registered in the Copyrights Register shall notify the Ministry of every modification or change that occurs to the Register’s data or the attached documents within (20) twenty days from the date of the modification or change. The notification shall be served by means of a letter to be submitted by the person concerned, and the Ministry shall make a notation in the Register to the effect of any modification or change required.Article 7 - Reproduction or translation compulsory licence
Any person may apply to the Ministry to obtain a licence to reproduce or/and translate a work protected by law, in order to meet the needs of education of all kinds and levels, or the needs of public libraries or archives, and in accordance with the conditions set forth in this Decision.Article 8 - Licence application
- The applicant for a licence to reproduce or translate a work shall produce evidence that the author or the right holder has refused to grant him permission to reproduce or translate the work and publish the reproduced or translated edition, or that he was unable to access or communicate with the author or the holder of the right to use the work.
- If the licence applicant is unable to access or communicate with the author or the holder of the right to use the work, he shall address the publisher whose name appears on the work and produce evidence that he has taken the procedures stipulated in the preceding paragraph.
Article 9 - Conditions for the reproduction compulsory licence
- Without prejudice to the provisions of this Decision, the following shall be required to issue a compulsory licence to reproduce the work:
- A period of (5) five years has lapsed as of the date of the first publication of the work.
- A copy of the work licensed by the author or the holder of the right to use the work is not available in the State’s markets.
- The needs of education, public libraries, or archiving houses are met at a price close to the usual price in the State for similar works.
- The following cases are excluded from the provisions of Clause (1) of this Article:
- If the work contains topics related to mathematical, natural, or technical sciences, it shall be permissible to apply for a compulsory licence after the lapse of a period of (3) three years from the date of the first publication of the work.
- If the work contains topics related to the world of imagination, such as novels, poetry, theatrical and musical compositions, and art books, it shall be permissible to apply for a compulsory licence after the expiry of a period of (7) seven years from the date of the first publication of the work.
d- A period of (6) six months has lapsed as of the date of the date of the first contact with the author or the holder of the right to use the work, provided that the period starts to run after the expiry of the period of (3) three years referred to in Paragraph (a) of Clause (1) of this Article.
Article 10 - Conditions for a compulsory translation licence
Without prejudice to the provisions of this Decision, the following is required to issue a compulsory translation licence:1- The expiry of a period of (3) three years from the date of the first publication of the work without a translated copy of it into Arabic or into a common language circulating in the country that meets the needs of education, public libraries or preservation houses, or if the translated copy has run out in the country after that period.
2- The expiry of a period of (6) six months from the date of the first contact with the author or the owner of the right to exploit the work, provided that it starts to run after the expiry of the period of (3) three years referred to in Clause (1) of this Article.
3- Subject to the provisions of this Article, the provisions stipulated regarding the reproduction and not the translation shall apply to the work referred to in connection with translation, whenever it contains illustrative images, with the terms, periods, and conditions set forth in Article (9) of this Decision.
Article 11 - Prohibitions of compulsory licensing
A licence may not be granted in any of the following instances:- If the work has been withdrawn from circulation at the request of the author or the holder of the right to use the economic rights.
- If the author or the holder of the right to use the economic rights offers the work for circulation during the additional period referred to in Articles (9) and (10) of this Decision in response to the needs of education, public libraries, or archiving houses at a price close to the usual price in the State for similar works.
- The name of the author shall be mentioned on the translated or reproduced edition, with the title of the work as stated in its original language.
- The edition concerned shall be faithful to the original work by the correct reproduction or translation thereof.
- A notation shall be made on each copied or translated edition to the effect that it is valid for circulation within the State only, with a mention indicating that the edition was issued based on a compulsory licence.
- The licence shall be used with the aim of meeting the needs of education, public libraries, or archiving houses.
- A fair financial remuneration shall be paid to the author or the holder of the right to use the work, as determined in the decision issued to grant the licence and guided by the international standards in force in this field.
- Evidence shall be produced to the Ministry, before receiving the licence, to the effect that the financial
Article 13 - Personal character of the reproduction or translation licence and prohibition of its assignment
The licence to copy or translate a work shall be issued in the name of the licence applicant and may not be assigned to third parties.Article 14 - Expiry of the reproduction or translation licence
- The licence for reproduction or translation shall expire if the author or the holder of the right to use the work makes it available as reproduced or translated at a price close to the price of similar works in the State.
- The edition for which a reproduction or translation licence was issued shall be circulated until it runs out.
Article 15 - Collective Management Organisation
- The Collective Management Organisation shall obtain a permit from the Ministry before practicing this activity.
- The Collective Management Organisation shall procure, before submitting the Permit application referred to in Clause (1) of this Article, the necessary approval from the Competent Authority in the State in accordance with the conditions established in this regard.
- In order to obtain a Collective Management Permit, the following documents and data shall be produced:
- A copy of the permit applicant’s memorandum of association and statute.
- The form of the contract concluded between the applicant and the rights holders’ members of the entity requesting the Permit, and the mechanism for distributing the return among the members.
- Form of agreements related to financial collection between the applicant for the Permit and any other beneficiary persons, provided that they include the details of the financial agreement and the collection mechanism.
- A report that includes relevant data and details, including economic rights such as schedules, lists, etc., with the beneficiary persons and the collection and distribution mechanism. e- A copy of the identity of the responsible manager of the entity requesting the Permit.
- The Ministry shall study, approve, and issue the Permit application, after fulfilling the requirements and approving the data and documents referred to in Clause (3) of this Article. In the event that the completion of the Permit application requires any necessary data or modification to any of the data and documents previously submitted, the Permit applicant shall undertake the same and provide the Ministry with the aforementioned requirements for issuing the Permit. 5- The Collective Management Organisation shall abide by the following:
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- A list of members (rights holders), their capacities, and addresses.
- Data on the collected funds, indicating the user classification from whom the collection was made.
- A list of the employees and their work and the quota of national employment.
- A list of the names and job titles of the Board of Directors.
- A summary of the main activities in which the Collective Management Organisation participates, such as board meetings, conferences it has organised or attended, and award ceremonies.
- A summary and description of the purpose and status of any current litigation or other proceedings.
- A list of the foreign bodies with whom the Collective Management Organisation has entered into contracts.
- Data of the total amounts distributed in the past year.
- The main objectives for the coming year.
- A report on its accession to international memberships.
- Keeping a copy of the agreement concluded between it and the users of economic rights, in which the agreed upon expenses of the financial collection are specified.
- Taking all administrative and legal measures to protect the rights of the contracting parties.
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Preparing the final accounts and distributing profits to the contracting parties at least once during the year.e- Allowing the contracting parties to view the final accounts and the method of distributing profits. f- Preparing general periodic reports for rights holders indicating the parties that used their works and the amountscollected.
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- The Collective Management Organisation shall pay the annual fees for the Permit, which shall be renewed annually after paying the prescribed fees.
- The Ministry may cancel the Permit after its issuance in the event that the Collective Management Organisation does not comply with the provisions of the Law or the decisions issued in implementation thereof, and its obligations towards the contractors shall remain effective without the Ministry bearing any responsibility.
- The Collective Management Organisation may not refuse to manage the economic rights of authors or holders of neighbouring rights without a justifying reason.
- The Collective Management Organisation shall ensure that the material return is delivered to the authors or the holders of neighbouring rights in accordance with the internal distribution mechanism, present the supporting documents thereof, and submit the same to the Ministry in the event it is so requested.
- The Collective Management Organisation may deduct a percentage of the total funds collected in return for managing the collection and distribution of the financial remuneration for use, provided that the deduction percentage does not exceed 25% of the total amounts collected. This percentage is only for administrative expenses, and the Ministry may reduce this percentage whenever it deems so.
- No amounts other than administrative expenses shall be deducted except with the approval of the members.
- The Ministry may request the applicant to produce evidence of his affiliation with the International Federation concerned with collective management activity, whenever it deems necessary.
- The Collective Management Organisation may not amend the data or documents submitted for obtaining the Permit, including the imposition or modification of economic rights, prior to their approval by the Ministry.
- The work mechanism of the Collective Management Organisation shall include a mechanism for settling internal disputes and complaints by independent persons experienced in this field.
- The administrative penalties imposed on the authorised person's violation of the provisions of this Law and this Decision shall be determined by a Cabinet decision based on the Minister’s proposal.
Article 16 - Accessible Format Copy
- The Approved Body may apply to the Ministry to obtain a licence to prepare copies of any accessible format copy.2- In order to obtain the approval of the Ministry, the following is required:
c- Distribution of accessible format copies shall be restricted to beneficiary persons or approved bodies inside or outside the State, to the exclusion of others. d- The approved body shall not to introduce changes other than those necessary to make the work accessible. e- The approved body shall perform the activity on a non-profit basis.
f- The approved body shall create a database of all soft copies, including all of the following: 1- The name of the author.
- The title of the book.
- The name of the publisher.
- The number of copies.
- The method of making the accessible format copy.
- The name of the printing press that made the accessible format copy, its location, and the scope of its distribution.
Article 17 - Customs clearance
- The author, the right holder, or their successors may file an application for non-temporary customs clearance with the customs authorities before the intellectual works leave the customs domain. The customs authorities shall decide on the application and notify the applicant of their decision immediately upon its issuance.
- The customs authorities may, on their own, refuse the temporary customs clearance in case of doubt about the authenticity of any of the documents submitted thereto.
- In all cases, the decision of the customs authorities refusing the temporary clearance shall be grounded and valid for a maximum period of (20) twenty days.
- The applicant shall attach to his application the documents that prove his right to the content of the application as duly certified, and the customs authorities shall verify the validity of the documents referred to in cooperation with the Ministry.
- The customs authorities may instruct the applicant to provide an appropriate guarantee or an equivalent security sufficient to protect the person against whom the decision refusing the customs clearance is issued from preventing the misuse of the right to request a stay of customs clearance.
- The guarantee shall not be refunded to the applicant if the competent court rules to cancel the decision refusing the customs clearance, or if the importer or exporter produces official documents indicating the invalidity of the application. 7- The customs authorities shall enable the applicant to attend - if he wishes - when inspecting the materials mentioned in the application, provided that the permission to attend be issued specifying the name and capacity of the person authorised to attend and is valid for one time only.
Article 18 - Future works
- Any disposal of the author in the sum of his future intellectual production shall be null and void.
- As an exception to Clause (1) of this Article, the author may contract for a number of his future works, provided that they do not exceed (10) ten future works.
Every provision that contradicts or contravenes the provisions of this Decision shall be abrogated.
Article 20 - Publication and entry into force of the Decision
The present Decision shall be published in the Official Gazette and shall come into force on the day following the date of its publication.Issued by us: On 10 Shawwal 1443 H.
Corresponding to 11 May 2022
Mohammed Bin Rashid Al Maktoum
Prime Minister The present Decision was published in the Official Gazette of the United Arab Emirates, Issue no. 727, p. 25.
Cabinet Decision No. 57/2022
On Executive Regulations of the Federal Decree- Law No. 36/2021 on
Trademarks (beta)
| Type | Law |
| Issued on | 7 Jun 2022 (corresponding to 7 Dhi Al-Qi’dah 1443 H) |
| Nature | Cabinet Decision |
| Jurisdiction | United Arab Emirates |
| Lexis |
| ® |
| Middle East |
Document link: https://www.lexismiddleeast.com/law/UnitedArabEmirates/CabinetDecision_57_2022
https://www.lexismiddleeast.com
Kindly note that this law has not yet been published in the Official Gazette.
The Cabinet:
Having considered:
The Constitution.
Federal Law No. 1/1972 on Terms of Reference of the Ministries and Authorities of the Ministers, as amended,
Federal Decree-Law No. 36/2021, on Trademarks,
Pursuant to the presentation of the Minister of Economy and the approval of the Cabinet, Resolves as follows:
Article 1 - Definitions
The definitions in Federal Decree Law No. 36/2021, as mentioned above, shall apply to the provisions hereof. For other definitions, the following words and phrases shall have the meanings assigned to each of them, unless otherwise required by the context:Competent Department: The Trademarks and Intellectual Works Department at the Ministry.
Trademark: The trademark in the meaning set forth by Article (2 of the Law.
Registered Agent: The agent registered with the Ministry in the register of trademarks registration agents.
Law: Federal Decree-Law No. 36/2021, on Trademarks.
Article 2 - Terms, Conditions and Procedures of Registration
- The trademarks registration application shall be submitted by owner of the trademark, if it has a domicile in the country or by an agent registered into special register of trademarks registration agents.
- Applications submitted by authorities registered in freezones of the country shall be dealt with as the applications submitted by any person having a domicile in the country.
- Application shall be submitted for one or several classes, according to international classification of commodities and services.
- Trademark registration application shall be submitted on the form prepared for this purpose, through electronic services of the competent department.
- Registration fees shall be several for the application on several classes.
- Copy of the trademark to be registered.
- Name, address, nationality and profession of the applicant. If the applicant is an artificial person, its name, address of headquarters and nationality must be mentioned.
- Name, data and address of the registered agent, so long as the application is submitted by registered registration agent.
- Accurate description of the trademark to be registered.
- Commodities or services for which a trademark is to be registered and their class.
- Any other data determined by the Ministry.
- Evidentiary documents.
- Copy of the power of attorney, duly authenticated and translated into Arabic, so long as the application is submitted by the registered agent.
- Certified translation into Arabic, determining the method of pronunciation, if the trademark to be registered includes one or more terms written in a foreign language.
- Musical note and mp3 file, if the trademark is related to an audio.
- Written description of the chemical composition, if the trademark is for an odor.
Article 5 - Examination and deciding of the application
- The competent department shall examine registration applications and verify that they are not identical or similar to a previously registered trademark and that they do not violate the provisions of decree law and its executive regulations. The Ministry shall issue its resolution in this regard, whether by acceptance of the application, if it fulfills the terms and procedures stipulated at law and in this resolution or by rejection thereof, if it is not consistent with them or conditioning acceptance on certain conditions or amendments.
- The competent department shall inform the applicant- through the modern electronic means- of its resolution and shall ask the applicant to fulfill and provide the terms or documents or to make the required amendments for acceptance of the application.
- If the applicant fails to respond to the resolution of the competent department within 30 days of the date of notification, it shall be considered as waiving the application.
- If the application is requested, the applicant or its agent shall pay the prescribed publication fees.
- If a resolution is issued with dismissal of the registration of the trademark or acceptance with conditions or certain amendments, the registration applicant or the registered agent may submit grievance to the grievances committee, within 30 days from the date of notification.
Article 6 - Announcing the Trademark in the Bulletin of the Ministry
- If the Ministry accepts application for registration of the trademark, it shall, before registration, publish it in the Ministry’s bulletin at the expense of the applicant. The bulletin shall show the last date for submission of objection to registration of the trademark.
- Publication shall be within 30 days from the date of notification of the resolution to accept application.
- The trademark shall be published in an online bulletin, issued by the Ministry. The publication announcement shall include the following data:
- Number and date of submission of the application.
- Name, address and nationality of the applicant.
- Copy and description of the trademark.
- Name and address of the registered agent (if any).
- List of the commodities or services for which the trademark is to be registered and their class.f. Conditions and requirements (if any).
Article 7 - Objection to Registration of the Trademark
- Any concerned person shall have the right to submit a reasoned objection through the online services of the competent department for registration of the trademark within 30 days from the date of publication in the Ministry’s bulletin, after payment of the prescribed fees.
- The competent department shall serve copy of the objection on the applicant within thirty (30) days of the date of its submission.
- The applicant shall provide the competent department with a written reply to objection, within (30) days from the date of its notification, otherwise, it shall be considered as assigning the application.
- The competent department shall set a date for hearing statements and submitting evidentiary documents and shall notify the parties, whenever it deems appropriate.
- The party who desires to attend the statements hearing shall pay the prescribed fee.
- The competent department shall inform both parties of its reasoned resolution, which shall include any terms and requirements it deems appropriate.
- A grievance may be submitted against the resolution issued by the competent department to decide objection before the grievance committee within 30 days of the date of the notice.
Article 8 - Waiver or Amendment of Application for Registration of the Trademark
- The applicant may waive the trademark registration application at any time.
- Application for re-registration of the trademark shall be treated as a new application.
- No amendment may be made to the registration application, including amendment of the class, after it is published in the Ministry’s bulletin, in any following stage.
Article 9 - Final Acceptance of Registration
- The resolution to accept registration shall be considered final, after thirty (30) days of the date of publication of the announcement of the trademark in the competent bulletin issued by the Ministry without any objection to its registration or upon issuance of a final judgment on the trademark, by the competent court.
- The registration applicant shall pay the trademark registration fee, within 30 days of the expiry date of the objection period to registration of the trademark.
- Registration of the trademark shall be effective from the date of submission of registration application, as shown in the record of the trademarks.
- If a trademark is registered without giving it or any part of it a special color, its registration shall be considered as including all colors.
- The competent department shall, sua sponte or upon request of the competent person, correct any material error in the trademark.
Article 10 - Amendment to Trademark and Data of its Owner
- The owner of the trademark shall, whenever it desires, make any amendment or addition to its registered trademark, in a manner that does not affect it substantially by submission of amendment application on the form designed for this purpose, to the competent department. This application shall be subject to the same procedures of the original registration applications, with regard to acceptance and rejection. This application shall be published in the relevant bulletin and shall be subject to the procedures of grievance and objection, according to the conditions and rules related to original registration requests.
- Owner of the registered trademark may request amendments of the following data in the record, pursuant to the form designed for this purpose, after payment of the prescribed fees:
- Name, title, address, profession or nationality of the trademark owner. In case of artificial persons, any change to the name or address shall be recorded.
- Addition or amendment of the commodities and services for which the trademark is registered.c. Change of the attorney, his name or address.
- The competent department shall make an announcement, including the required amendment and shall issue it in the bulletin that would be issued by the Ministry, after payment of the prescribed fees. This shall be stated in the trademarks register, in order to provide the applicant with an updated certificate.
Article 11 - Renewal of the Protection Period
- Owner of the trademark who desires to renew the protection period must provide an application on the form prepared for this purpose, to the competent department within the last year of the protection period and for 6 months, following payment of the prescribed fees.
- The competent department shall publish announcement of the renewal in the bulletin of the Ministry, after payment of the prescribed fees. This shall be stated in the trademarks register.
- Announcement of renewal shall include the following data:
- Registration number of the trademark.
- Name, address and nationality of the trademark owner.
Article 12 - Temporary Protection of the Trademarks used in Exhibitions
- Owner of the trademark which is put on commodities exhibited or used on services in official international exhibitions and officially recognized exhibitions, inside the country, shall have the right to request temporary protection of the trademark during the exhibition, one month at least before opening of the exhibition, pursuant to the form prepared for this purpose, after payment of the prescribed fee.
- The trademark referred to in clause (1) of this Article shall have temporary legal trademark within the exhibition period.
- The temporary protection shall be removed once the exhibition period end and upon the desire of owner of the trademark referred to in this Article.
Article 13 - Submission of Application for Temporary Protection of the Trademarks used in Exhibitions
- Applications for the temporary protection of the Trademarks used in Exhibitions shall be registered in a special register, called: (temporary protection register), including the following data:
- Temporary protection number, date and expiry period.
- Name f the exhibitor or of the trademark owner.
- Photo and description of the trademark.
-
- Photo and description of the trademark.
- Name of the exhibition, date of its official opening and duration.
- Statement of the commodities or services which trademark is to be protected and its class.
- The Ministry shall issue a certificate of temporary protection of the trademark used in exhibitions.
Article 14 - Deregistration of the Trademark
- The department shall, on its own accord or upon request of the concerned person, deregister the trademark, in the following cases:
- If the trademark is not registered, according to Article (21) of the Law.
- If it is shown that the trademark is registered in violation of the provisions of the law and of this resolution.
- Upon the request of owner of the trademarks, pursuant to the provisions of Article (24), clause (1) of the Law.d. Upon a final judgment, delivered by the competent court.
- Owner of the registered trademark who desires to deregister it for all commodities or services or some of them shall apply to the competent department on the form designed for this purpose, after payment of the prescribed fees. If the register shows that a license has been previously issued for the use of the trademark, deregistration may only be made upon the written approval of the licensee, unless the licensing contract specifies for express approval of the licensee of waiver of the license.
- The deregistration application shall be submitted to the competent department through online services, after payment of the prescribed fees, provided that the competent department shall decide the deregistration application within 90 days of the date of the submission thereof.
- The competent department may, before deregistration of the trademark, notify owner of the trademark of the cause of deregistration and hear its statements and determine its defenses.
- The competent department shall state in the trademarks register that it was deregistered and this shall be announced in the Ministry’s bulletin, provided that the announcement shall include the following data:
- Photo and description of the trademark.
- Number of the registered trademark.
- Name and nationality of the trademark owner.
- Cause and date of deregistration.
- The publication fees of deregistration shall be paid upon the request of the trademark owner.
Article 15 - Trademark Ownership Transfer
- The trademark ownership is transferred upon an application to the competent department, from the person to whom the ownership is transferred or from his attorney, accompanied by the supporting documents, which are duly authenticated and certified and translated into Arabic, after payment of the prescribed fees on the form prepared for this purpose.
- The ownership of the trademark shall be transferred by a sale, transfer, merger contract or upon a court resolution. The contract or resolution shall include the following data:
- Number of the registered trademark.
- Name of the previous trademark owner.
- Name, title, tradename (if any), nationality and address of the trademark transferee.
- Ownership transferer date and the occurrence by which the ownership was transferee.
- If the application is submitted by an agent, its name, title and address shall be mentioned and the competent department shall state in the register that the trademark is transferred, showing the name of the new owner, its address and the date thereof and providing the applicant with evidence thereof.
- The competent department shall publish an announcement that the trademark ownership is transferred, including the following data:
- Number and date of registration of the trademark.
- Photo and description of the trademark.
- Name of the previous owner of the trademark.
- Name, nationality and address of ownership transferor.
- The competent department shall publish the announcement in the Ministry’s bulletin, after payment of the prescribed fees.
- Without prejudice to Article (6) of the Law, the natural heirs of the trademark owner shall have the right to transfer
- Without prejudice to Article (6) of the Law, the natural heirs of the trademark owner shall have the right to transfer ownership in their names, jointly or to any of them, by a transfer document, signed by the person entitled to the trademark.
- Transfer of the trademark registration application includes the relevant data, including the data of the transferee and any documents determined by the competent department, in this regard.
Article 16 - Mortgage of the Trademark
- The mortgage of the trademark shall be stated in the register, pursuant t the same procedures and conditions related to transfer of ownership of the trademark. The publicity of mortgage shall include the same data mentioned in Article 16 of this resolution, after payment of the prescribed fees.
- The mortgage shall be redeemed, upon an application to the competent department from owner of the trademark, accompanied by the required documents in this regard, justifying redemption provided that those documents shall be duly authenticated and certified and translated into Arabic, after payment of the prescribed fees.
- The competent department shall announce the mortgage or redemption in the Ministry’s bulletin, after payment of the prescribed fees. The mortgage or redemption shall be stated in the register and the applicant shall be provided with evidence thereof.
Article 17 - Attachment of the Trademark
Attachment of the registered trademark upon court order shall be included in the register and the attachment may only be removed upon conclusive court judgment.Article 18 - Licensing the use of Trademark
- If the trademark owner licenses any natural or artificial person to use the trademark for all or some of the commodities or the services registered, the licensing contract must be written, duly authenticated and certified and translated, if the original copy is written in a language other than Arabic. It is not permissible in all cases that the licensing period exceeds the period prescribed for protection of the trademark.
- Application for licensing the use of the trademark shall be submitted to the competent department, by owner of the trademark, the licensee or the registered agent of each of them, pursuant to the form designed for this purpose, after payment of the prescribed fees, which includes the following:
- Number of the registered trademark.
- Name and nationality of the trademark owner.
- Name, address, residence and nationality of the licensee.
- Licensed commodities and services.
- Licensing commencement date and expiry date.
- Geographical scope of licensing, if any.
- Duly translated, authenticated and certified licensing contract.
- Any documents or papers required by the competent department.
- The competent department shall include in the register the license to use the trademark and shall provide the applicant with evidence thereof. Furthermore, the competent department shall publish the announcement in the Ministry’s bulletin, after payment of the prescribed fees, provided that the announcement shall include the following data:
- Photo and description of the trademark.
- Number and date of registration of the trademark.
- Name, address and nationality of the trademark owner.
- Name, address and nationality of the licensee.
- Statement of the commodities or the services which use is licensed and their class.
- Commencement and expiry dates of licensing.
- Geographical scope of licensing (if any)
Article 19 - Deregistration of the License
- The license shall be deregistered upon an application to the competent department, submitted by owner of the trademark, the licensee or the registered agent of any of them, accompanied by evidence of expiry or termination of the license, after payment of the prescribed fees.
- The competent department shall inform the other party with the deregistration application in writing and the other party shall have the right of objection, before Grievance Committee, within 30 days of the date on which it is informed of the deregistration request, lodging copy of objection and evidence of its submission with Grievance Committee
- If there is no objection submitted to deregistration of the license or if there is no final resolution issued by the
Group Trademarks, Monitoring Trademarks and Trademarks of Public Benefit Associations and Professional
Institutions
Article 20 - Registration of Group Trademarks
Subject to Articles (2), (3) and (4) hereof, the group trademarks registration application shall be accompanied by the following requirements:- Statement that it is related to group trademark.
- Copy of Articles of association of the applicant, with amendments, provided that it shall include:
- Statement of the class of the people who have the right to use the trademark and their relationship with the applicant.
- Copy of requirements for use of the group trademark of commodities and services.
- A resolution that the applicant takes or will take decisive and sufficient monitoring procedures for the use of the trademark by its affiliate members.
- How the members qualify for membership in such entity.
- All documents shall be duly authenticated and certified and translated into Arabic.
- The group trademarks shall be subject to the same procedures of registration, publication and deregistration set forth herein.
Article 21 - Registration of the Trademarks for Monitoring or Inspection
- Subject to Articles (2), (3) and (4) hereof, the application for registration of the trademarks for monitoring or inspection shall be accompanied with the following requirements:
- Statement that the registration application is related to monitoring or inspection trademark.
- Copy of Articles of association of the applicant entity, with amendments that would have been included, provided that it shall include:
2) An acknowledgement that the group trademark certifies the quality, types or benefits of the commodities or services and that they do not refer to the source of the commodities or services.
-
- Documents showing the specifications and standards applied by the applicant entity in order to control the use of the trademark, showing that the said applicant uses an approved program for quality assurance.
- A certificate showing the benefits of the certified commodities or services or those which certification is required.
- All documents must be duly certified and authenticated and translated into Arabic.
- Those trademarks shall be subject to the procedures or registration, publication and deregistration of the trademarks, set forth herein.
Article 22 - Registration of the Trademark for Non- Commercial Purposes
If application is submitted for registration of trademarks for non- commercial purposes, this shall be stated in the application, with attachment of the Articles of association of the public benefit association or the professional institution of the applicant. These shall be subject to the same procedures for registration, publication and deregistration of the trademark shown herein.Article 23 - Geographical Indicators
- The registration application of the geographical indicator shall be submitted by one or more artificial persons on the form prepared for this purpose by the applicant or its registered agent in the register of agents.
- Subject to Article (2), (3) and (4) hereof, the applicant for geographic indicator shall include the following data:
-
- Name and legal character o the artificial applicant ad the purpose of its construction.
- Nationality, residence of the applicant and the type of products.
- Photo and description of the geographic indicator.
- Data of the geographic indicator, showing advantages, characteristics and features of the geographic indicator, related to the geographic area, as detailed by a certified entity.
- Copy of registration certificate of the geographic indicator in the country of origin, if the application is for a geographic indicator from outside the country, duly certified and translated.
- Power of attorney, if the application is submitted by attorney of the applicant, duly certified and translated.
- The ministry’s resolutions, issued with regard to acceptance, rejection or amendment of the register after registration, with regard to the applications for registration of the geographic indicators shall be subject to the provisions related to grievance and appeal as shown in Articles (12) and (13) of the Law and the provisions related to publication and objection, stated in Articles (15) and (16) of the Law.
Article 24 - Custom Clearance
- The concerned person or his representative shall have the right- if he has justified reasons to believe that there is a possibility of importing of counterfeited or imitated commodities, bearing a trademark similar to his registered trademark in a manner that would lead to confusion of the public- to apply in writing to the custom authority to prevent custom clearance of those commodities and to prevent their trading, provided that the application shall be supported with the required data and information that prove infringement of the applicant’s trademark.
- The custom authority concerned with custom clearance shall decide the application and inform the applicant, in writing, of its resolution within 7 working days from the date on which the application is submitted. The resolution shall apply if the application is accepted for one year, commencing from the date of its submission or to the period remaining of the trademark protection period, whichever is lesser, unless the applicant requests a shorter period.
- The custom authority may instruct the applicant to provide appropriate warranty or equivalent guarantee, sufficient to protect the defendant from misuse of the right to apply for prevention of custom clearance.
- Without prejudice to the provisions of the above clauses of this Article, the custom authority may, sua sponte, issue a resolution to prevent custom clearance of the imported or transit commodities or those prepared for export, when they reach the custom area subject to its power, provided that it is provided with sufficient evidence that those commodities are imitated or are, illegal, bearing a trademark similar to a registered one which would lead to confusion of the public.
- The competent authority shall, once it decides to prevent the custom clearance of commodities that reached the custom area subject to its power:
- Serve a notice on the importer of the commodities and the concerned person with the resolution issued to prevent the custom clearance, once it is issued.
- Inform the concerned person, upon his written request, of the names and addresses of the commodities sender, importer and receiver and their quantities.
- Allowing the concerned persons to inspect the commodities according to the custom procedures followed in this regard.
- The concerned person shall have the right to file a case of the original dispute to the competent court and inform the competent authority within no more than (10) working days of the date on which he is informed of the prevention of custom clearance of these commodities, otherwise, the resolution shall be considered as null and void, unless such authority or the competent court decides to extend such period at its discretion, for no more than another (10) working days.
- With exception of the cases estimated by the court, if it is proven to the court that the commodities which custom release is prevented are imitated, counterfeited or illegally bear a trademark similar to a registered trademark in a manner that leads to confusion of the public, a judgment must be delivered to damage those commodities, at the expense of their importer or to get rid of them outside the commercial channels, if the damage would cause unacceptable harm to public health or to the environment.
- The commodities may not be cleared to commercial channels or allowed to be exported for the mere removal of the trademark that was illegally used.
- With regard to the custom clearance and the inspection, the conditions and procedures applicable by the custom authorities shall be followed.
Article 25 - International Registration Applications
The international registration applications submitted according to Madrid Treaty Protocol on International Registration of the Trademarks shall be subject to executive regulations of the protocol, as amended.Article 26 - Repeals
Any provision contradicting the provisions hereof shall be repealed.
Article 27 - Publication and Enforcement of the Resolution
This resolution shall be published in the Official Gazette and shall come into force from the date following its publication.We issued this resolution on: 07/ Duelq’da/ 1443 AH
Corresponding to 07/ June 2022 G
The original copy is signed by
His Highness Sheikh/ Muhammad bin Rashid Al Maktoum The Prime Minister
Federal Decree-Law no. (38) of 2021
Issued on 20/09/2021
Corresponding to 13/Safar/1443H.
ON COPYRIGHTS AND NEIGBOURING RIGHTS
Abrogating:
Federal Law No. 7 of 2002
We, Khalifa bin Zayed Al Nahyan, President of the United Arab Emirates,
- Pursuant to the perusal of the Constitution;
- Federal Law no. (1) of 1972 on the Competencies of the Ministries and Powers of the Ministers and its amendments;
- Federal Law no. (18) of 1981 on the Regulation of Commercial Agencies and its amendments;
- Federal Law no. (5) of 1985 promulgating the Civil Transactions Law and its amendments;
- Federal Law no. (11) of 1992 promulgating the Civil Procedure Law and its amendments;
- Federal Law no. (35) of 1992 promulgating the Criminal Procedure Law and its amendments;
- Federal Law no. (18) of 1993 promulgating the Commercial Transactions Law;
- Federal Law no. (7) of 2002 on Copyrights and Neighbouring Rights and its amendments;
- Federal Law no. (1) of 2006 on Electronic Commerce and Transactions and its amendments;
- Federal Law no. (19) of 2016 on Anti-Commercial Fraud Law;
- Federal Decree no. (233) of 2016 on the State’s accession to the Marrakesh Treaty to Facilitate
- Federal Decree no. (20) of 2017 on the State’s accession to the Beijing Treaty on Audio-Visual Performances;
- Federal Decree-Law no. (31) of 2021 promulgating the Crimes and Penalties Law;
- Federal Decree-Law no. (32) of 2021 on Commercial Companies;
- Federal Decree-Law no. (36) of 2021 on Trademarks;
- Federal Decree-Law no. (37) of 2021 on the Commercial Register; and
- Acting upon the proposal of the Minister of Economy and the approval of the Council of Ministers,
Article 1- Definitions
In implementing the provisions of this Decree-Law, the following terms and expressions shall have the meaning assigned against each of them, unless the context otherwise requires:State: The United Arab Emirates.
Ministry: The Ministry of Economy.
Minister: The Minister of Economy.
Competent Court: The Federal Court of Appeal.
Civil Court: The Federal or Local Court of First Instance, as the case may be.
Grievances Committee: The committee stipulated in Article (37) of this Decree-Law.
Broadcasting Organisation: Any entity that carries out audio, visual or audio-visual broadcasting by wireless means.
Broadcasting: The means of broadcasting sounds, or images and sounds, or any representations thereof by wireless means for reception by the public. Broadcasting shall include every similar transmission that takes place via satellite or the transmission of encrypted signals, in cases where the public is granted the means to decode those signals by and with the consent of Broadcasting Organisations.
Accredited Entity: The non-profit establishment that provides braille education, training, reading, or access to information services for the benefit of Beneficiary Persons. This includes government agencies and non-profit organisations that provide the same services to Beneficiary Persons within their basic activities or institutional obligations.
Work: Any innovative production in the fields of literature, arts, or science, of whatever type, manner of expression, significance, or purpose.
Author: The person who creates the work, or the person whose name is mentioned thereon or if, upon Publication, the Work is attributed to him as being the author thereof unless otherwise proven. Shall also be considered author, whoever publishes anonymous or pseudonymous work, or in any other manner, provided that there is no doubt as to the true identity of the Author; otherwise, the publisher or producer of the work, whether a physical or juristic person, shall be deemed as representing the Author in the exercise of his rights, until the true identity of the Author is recognised.
Innovation: The innovative character that bestows originality and distinction upon the work.
Holders of Neighbouring Rights: Performers, Producers of Phonograms, and Broadcasting Organisations, in accordance with the provisions of this Decree-Law.
Performers: Actors, singers, musicians, dancers, and other persons who recite, sing, play music or otherwise perform, in any manner, literary, artistic or other Works or any folklore expressions, that are protected pursuant to the provisions of this Decree-Law, or that have fallen into public domain.
Person: Any physical or juristic person.
Producers of Phonograms: The person who, on his own initiative and responsibility, undertakes the first fixation of the sounds making up the performance or any other sounds or the representation of sounds.
Publication: Making the work, sound or visual recording, radio program, or any performance available to the public, by any means whatsoever.
Public Performance: Communicating the Work to the public by any means, whether directly or otherwise, such as acting and presentation of audio or visual Works, artistic theatrical performances, presenting and playing musical Works and reading literary Works, whether live or recorded.
Public Communication: Wire or wireless Broadcasting of literary and artistic Works, including audio, visual or audio-visual Works, to the public by any means whatsoever, including making them available to the public in a manner that enables individual members thereof to access them at the place and time chosen by each of them separately.
Reproduction: The making of one or more copies of a Work, Sound Recording, Broadcasting program, or any performance, in any form or using any means, including downloading or permanent or temporary electronic storage, regardless of the method or device used for Reproduction.
Audio-Visual Fixation: The embodiment of moving images, whether or not accompanied by sound, or a
representation thereof, by which they can be perceived, reproduced, or conveyed using suitable devices.
Sound Recording: Fixation of the sounds that make up the performance or other sounds or the representation of sounds without affecting the rights arising therefrom by including it in a cinematic Work or an audio-visual work.
Producer of Audio-Visual Work: The person who provides the necessary facilities for producing an audio-visual Work and assumes the responsibility thereof.
Collective Work: The Work created with the participation of more than one Author, under the direction and management of a person who commits to publish it in their name, and in which the contribution of such Authors is incorporated, and where the Work of each Author cannot be separated and distinguished independently.
Joint Work: A Work created with the participation of more than one Author, whether or not it is possible to distinguish the contribution of each therein, and which cannot be classified as a Collective Works.
Derived Work: The Work whose origin derives from a previously existing Work, such as translations, collections of literary and artistic Works and collections of folklore expression, as long as they are innovative in their arrangement or the choice of their contents.
National Folklore: Every expression of folk traditions be it oral, musical or of movement as expressed in distinct elements reflecting a popular traditional heritage which arose and is preserved in the State, and which cannot be attributed to a known Author.
Beneficiary Person(s): A person with blindness or visual impairments to an extent that cannot be improved to become equivalent to the vision of a person without impairment, or the person who is unable to read, hold a book or use it for reading due to a physical disability, all without considering any other cases of disabilities.
Accessible Format Copy: A copy of a Work in an alternative style or format that permits the Beneficiary Person to have access to the original Work feasibly and comfortably as a physical person without visual impairment or any other disability preventing him from having access to Works, without prejudice to the moral rights of the original work.
Public Domain Works: All Works that are initially excluded from protection, or of which the economic rights protection period has expired.
Article 2- Works under protection
Authors of Works and Holders of Neighbouring Rights shall enjoy the protection provided for in this DecreeLaw, if their rights are violated within the State, namely as concerns the following Works:- Books, brochures, articles, and other written Works.
- Smart applications, computer programmes and applications, databases, and similar Works determined by a decision of the Minister.
- Lectures, speeches, oral and written sermons and other Works of a similar nature.
- Theatrical Works, musical shows, and pantomime.
- Musical Works, either with or without words.
- Audio, visual, or audio-visual Works.
- Architectural Works, and engineering drawings and plans.
- Works of drawing with lines or colours, sculpting, engraving, and printing on stone, fabrics, wood, or metals, and any other similar Works.
- Works of photography and similar Works.
- Works of applied and plastic arts.
- Illustrations, geographical maps, sketches, and three-dimensional Works related to geography, topography, architecture, and others.
- Derivative Works, without prejudice to the protection granted to the original Works from which these Works were derived.
Article 3
Protection shall not cover the following:- Ideas, procedures, working methods, mathematical concepts, principles, and abstract facts, but it shall however extend to the innovative expression of any thereof.
- Official documents, regardless of their original language, or the language transmitted to them, such as texts of laws, regulations, decisions, international agreements, judicial rulings, arbitrators' awards and decisions issued by administrative committees having a judicial jurisdiction.
- News and reports on current incidents and events of a purely informative nature.
- Public Domain Works.
Article 4- Registration of Works rights
- The Implementing Regulation of this Decree-Law shall regulate the registration of the rights to the Work and dispositions made vis-à-vis them, and the registers of the Ministry shall be considered a reference for the data of the Work and its ownership.
- The non-registration of the Work or the actions that occur thereto shall not result in a breach of any aspect of the protection or rights established by this Decree-Law.
Article 5- Moral rights
- The Author and his universal successor shall enjoy perpetual moral rights which may not prescribe or be assigned.
- The rights of the Author and his universal successor referred to in clause (1) of this article shall be as follows: a- The right to decide the first Publication of his Work. b- The right to claim the right of paternity over his work.
- The right to prohibit any modification of the Work if it distorts the Work or prejudicial to the reputation of the Author.
- The right to submit a request to the Civil Court to withdraw the Work from circulation, based on justifying
Article 6- Amendment to the translation
Amendment to the translation shall not be deemed an infringement unless the translator has omitted reference to where the cancellation or change occurred or has caused thereby prejudice to the Author’s reputation.Article 7- Licence to use the Work
Only the Author and his successor, or the holder of the Author’s right may authorise the use of the work, in any manner whatsoever, namely through Reproduction, including downloading or electronic storage; acting, in any manner; Broadcasting; re-broadcasting; Public Performance or Public Communication; translation; assimilation; modification; rental; lending; or Publication in any manner, including making it available through computers, data or communication networks or any other means.Article 8- Renting computer software and audio-visual Works
The rental right is not applicable to computer programmes and smart applications, unless such programme is, in itself, the subject-matter of the rent. It is equally not applicable to audio-visual Works if it does not affect the normal use thereof.Article 9- Transfer and licensing of the Author's economic rights
- The Author or his successor may transfer to or license a third party, be it a physical or a juristic person, all or some of his economic rights set forth in this Decree-Law. Such transfer is valid only if made in writing and specifies the transferred right together with mentioning the object of such transfer, duration and place of use.
- The Author shall be the owner of all the economic rights that have not been explicitly assigned.
- Without prejudice to the moral rights of the Author provided for in this Decree-Law, the Author may not take any action that is likely to obstruct the utilisation of the disposed right.
Article 10- Consideration for the transfer of economic rights
The Author or his successor may receive remuneration in cash or in kind, in exchange for transferring any of the economic rights of the Work to a third party. Such consideration shall be in the form of share in the revenue resulting from the utilisation of those rights, or on the basis of a lump sum, or a combination of the both of them.Article 11- Reconsidering the value of the agreed consideration
Should the agreement referred to in Article (10) of this Decree-Law appear to be unfair to the Author or to any of Holders of Neighbouring Rights or should it become so due to circumstances subsequent to the conclusion of the contract, the Author, his successors or their successors may resort to the Civil Court to seek a review of the agreed upon consideration.Article 12- Licensing the economic rights to the Works of smart applications, computers, etc.
Without prejudice to the provisions of Article (9) of this Decree-Law, the licensing of economic rights concerning the Works of smart applications, computer programmes and applications, or databases shall be subject to the provisions of the contract received or affixed on the program, whether they appear on the support bearing the programme or on the screen of the computer, smart phones, or any other technical device on which the software has been downloaded or stored. The purchaser or user of such programme shall be bound by the terms included in the said contract terms.
Article 13- The Author’s disposal of the original copy of the Work
Unless otherwise agreed upon, the Author’s disposal, by any means, of the original copy of his work, shall not entail the assignment of any of his economic rights over this Work.Nonetheless, it is not permissible to impose upon the assignee, to whom the property of such copy has passed, without prior agreement, to enable the Author to reproduce the Work, exhibit the original copy thereof or communicate it to the public.
Article 14- Seizure of the Authors' economic rights
The Author's economic rights related to his published Works may be seized. However, it is not permissible to seize the economic rights contained in the Work whose Author dies prior to its Publication, unless it is decisively proven that he intended to publish it before his death.Article 15- Future production
- Any disposition an Author makes of his future intellectual opus shall be deemed null and void.
- As an exception to clause (1) of this article, the Author may conclude a contract in respect of a number of his future Works as specified by the Implementing Regulation of this Decree-Law.
Article 16- Moral rights of the Performers
Performers and their universal successors shall enjoy perpetual moral rights which may not prescribe or be assigned, entitling them to the following:- Attribute the performance, whether live or recorded, to themselves; and
- Prohibit alteration, distortion, defacement, or modification of their performance, in a manner that would prejudice their reputation.
Article 17- Exclusive economic rights of Performers
Performers shall enjoy the following exclusive economic rights:- The right to broadcast their unrecorded performance and communicate it to the public.
- The right to fix their performance on Sound Recordings or audio-visual recordings.
- The right to reproduce their performance fixed on Sound Recordings or audio-visual recordings.
- The right to rent to the public, for commercial purposes, the original or copies of their recorded performance.
- The right to distribute the original or copies of their recorded performance to the public, via sale or any other form of transfer of ownership
- The right to communicate their performance to the public by wire or wireless means so that the public can view or access them in any way they wish.
Article 18- Exclusive economic rights of Producers of Phonograms
Producers of Phonograms shall enjoy the following exclusive economic rights over their recordings:- The right to reproduce them in any manner whatsoever.
- The right to distribute the original or other copies of their Sound Recordings to the via sale or any other form of transfer of ownership.
- The right to right to rent to the public, for commercial purposes, the original or copies of their Sound Recordings.
- The right to make their Sound Recordings available to the public in any manner whatsoever.
- The right to broadcast and communicate Sound Recordings to the public in any manner whatsoever.
- The right to prevent any use of their recordings in any manner whatsoever without their permission.
Article 19- Exclusive economic rights of Broadcasting Organisations
The Broadcasting Organisation shall enjoy the following exclusive economic rights:- The right to grant licence for use of its recordings and broadcasts.
- The right to prohibit any Public Communication of its programmes and recordings, without its prior authorisation, and in particular, the recording of such programmes by copying, reproducing, renting, rebroadcasting, or communicating them to the public in any manner whatsoever.
Article 20- Protection period
- The Author's economic rights provided for in this Decree-Law shall be protected throughout his lifetime and for a period of (50) fifty years thereafter commencing on the first day of the calendar year following the year of his death.
- The economic rights of Authors of Joint Works shall be protected throughout their lifetime and for a period of (50) fifty years thereafter commencing on the first day of the calendar year following the year in which the last surviving Author dies.
- The economic rights of Authors of Collective Works, without the artists of applied arts Works, shall be protected for a period of (50) fifty years commencing on the first day of the calendar year following the year in which those Works were first published, should the Author be a juristic person. In case the Author is a physical person, the calculation of the protection period shall be computed on basis of the rule provided for in clauses (1) and (2) of this article.
- The economic rights of Works first published after the death of the Author thereof shall be protected for a period of (50) fifty years commencing on the first day of the calendar year following the year in which such Works have been first published.
- The economic rights of anonymous and pseudonymous Works shall be protected for a period of (50) fifty years commencing on the first day of the calendar year following the year in which such Works have been first published. In case the Author of such Works has been known or identified, or if he reveals his identity, the protection period shall be calculated according to clause (1) of this article.
- The economic rights of the Authors of Works of applied arts shall expire upon the lapse of (25) twenty-five years commencing on the first day of the calendar year following the year in which such Works have been first published.
- In case the protection period is calculated as of the date of first Publication, such date shall be taken as a basis for calculating the period, irrespective of re-Publication unless the Author has made substantial modifications to such Work upon re-Publication, so that it may be considered a new work. Should the Work be composed of several parts or volumes that have been separately published at intervals, each part or volume shall be deemed independent when computing the protection period.
- The economic rights of the Performers shall be protected for a period of (50) fifty years commencing on the first day of the calendar year following the year in which the performance has taken place. If the performance is fixed on a Sound Recording, the period shall be calculated as of the end of the year in which the Work has been fixed.
- The economic rights of the Producers of Phonograms shall be protected for a period of fifty (50) commencing on the first day of the calendar year following the year in which the recording has been published or the year in which the recording has been fixed, if not published.
- The economic rights of Broadcasting Organisations shall be protected for a period of twenty (20) years commencing on the first day of the calendar year following the year in which the radio and television programme was first broadcast.
Article 21- Compulsory Reproduction or translation licence
Any person may request the Ministry to be granted a compulsory licence for reproducing and/or translating any Work protected in accordance with the provisions of the present Decree-Law, after the lapse of (3) three years as of the date of publishing such work, in case of a licence for translation. Licences shall be issued, pursuant to a reasoned decision, in which is specified the scope of time and place of its use as well as the fair consideration due to the Author, provided that this is done in the manner that ensures that no prejudice shall be unjustifiably caused to the legitimate interests of the Author or his successor or to the normal use of the work, and that the objective of granting such licence is restricted to the fulfilment of the requirements of education, of all kinds and on all levels, or the requirements of public libraries and archives, as stipulated by the Implementing Regulation of the present DecreeLaw.Article 22- Restrictions and exceptions
Without prejudice to the moral rights of the Author, provided for in this Decree-Law, and in a manner that does not conflict with the normal use of the Work and does not cause unjustified damage to the legitimate interests, the Author may not prevent third parties, after the Publication of his work, from performing any of the following acts:1- Reproducing one single copy of the Work for purely personal use, for non-profit and non-professional purposes, with the exception of the following Works:
- Works of fine or applied arts unless they are displayed in a public place with the consent of the right owner or
- Works of architecture if they are permanently located in public places. c- Computer programmes, applications, and databases, unless pursuant to the provisions of clause (2) of this article.
- Making one single copy of the computer programme or applications or databases, with the knowledge of the legitimate possessor thereof. Such person may alone make extracts thereof provided that they fall within the licensed purpose or for the purpose of saving or replacement in case the original copy is lost, damaged or becomes unfit for use; and on condition that the backup or extracted copy be destroyed, even if downloaded or stored in the computer hardware, once there is no more reason for keeping the original copy.
- Reproducing protected Works for use in judicial proceedings, or the like, within the limits required by such procedures and provided that the source and the name of the Author are mentioned.
- Making a single copy of the Work by a non-profit archive or library or authentication offices, either directly or indirectly, in one of the two following instances:
- If the Reproduction is made for the purpose of preserving the original copy or of an original which is lost,
- If purpose of the Reproduction is to respond to a request made by a physical person who wishes to use it for a study or research, provided that the Reproduction is made just once or on separate occasions, in case it was impossible to obtain a licence for Reproduction pursuant to the provisions of the present Decree-Law.
- Citations of short paragraphs, excerpts, or analyses, within the customary limits of the work, for the purpose of criticism, discussion or information, with mention of the source and name of the Author.
- Performance of a Work in meetings with family members or by students in an educational institution, so long as such performance has not been made for direct or indirect consideration.
- Exhibiting Works of fine, applied, plastic or architectural arts in broadcasts, if such Works permanently exist in public places.
- Reproducing brief extracts of a Work in the form of manuscripts or sound, visual, or audio-visual recordings, for the purposes of cultural or religious education, or vocational training provided that Reproduction is made within the reasonable limits and does not go beyond the purpose thereof, that mention is made of the name of the Author and the title of the work, whenever possible, that the reproducer does not directly or indirectly seek profit, and that it was not possible to obtain a licence for Reproduction pursuant to the provisions of the present Decree-Law.
- Reproduction is an incidental and integral part of the process of transmitting a Work between different parties over a medium or network or a part of a process that involves enabling access to a legal copy of a digitally stored Work.
- Reproduction is made by a person authorised by the rightful party or by law to carry out the broadcast or the process referred to in clause (9) of this article.
- Reproduction takes place in the context of steps which, from a technical standpoint, are incidental and inevitable in order to accomplish a lawful action, and in a manner that ensures that the copy is automatically erased without being able to be retrieved for any purposes other than those mentioned in the preceding clauses (9) and (10) of this article.
Article 23- Accessible Format Copy
- The Beneficiary Person or his representative shall make accessible format copies for his personal use.
- The Accredited Entity may prepare accessible format copies without making any unnecessary changes or obtain them from another Accredited Entity without the Author’s permission to make them available to Beneficiary Persons inside or outside the country whenever it has legal access to the Work or a copy thereof and when the activity is not seeking profit.
- For the purposes of preparing accessible format copies, the Implementing Regulation of this Decree-Law shall specify the conditions and controls that shall be met by the Approved Bodies.
Article 24- Publication of some Works
1- Without prejudice to the Author’s moral rights pursuant to the provisions of this Decree-Law, the Author shall not prevent Reproduction through the newspapers, periodicals, or Broadcasting Organisations, within the limits justified by the purpose thereof, the Publication any of the following, provided that mention be made as to the source thereof and to the name of the Author:- Extracts of his Works that have been lawfully made available to the public. This shall apply on communicating extracts of a Work which has been seen or heard in the context of current incidents or Broadcasting or communicating the same to the public in any other manner.
- Articles published in newspapers and related to discussions of issues, which have preoccupied public opinion
- Speeches, lectures, and discussions that take place during public sittings delivered in the course of public sessions of parliamentary councils, judicial councils and public meetings, so long as such speeches, lectures and discussions are addressed to the public, and are reproduced within the framework of reporting current news.
Article 25- Restrictions on the Holders of Neighbouring Rights
Restrictions applicable to the economic rights of the Author provided for in the present Decree-Law shall apply to the Holders of Neighbouring Rights.Article 26- Special provisions for some Works
If more than one person contributes to the formation of a Joint Work, in such a manner where it is impossible to separate the share of each of them from the others, all joint authors shall be deemed equal Authors of the Work unless otherwise agreed upon in writing, and in this case, no Author may individually exercise the copyrights except by virtue of a prior written agreement reached between them.If the contribution of each of the Authors to the Joint Work represents a different and distinct form of art such that the contributions can be distinguished from one another, then each of them shall have the right to use the part to which he contributed separately, provided that this does not harm the use of the Joint Work, unless otherwise agreed upon in writing.
Each Author shall have the right file a lawsuit upon infringement of any of the copyrights protected under this Decree-Law.
In case of death of any of the joint authors, without a universal successor, his share shall be transferred to the rest of the joint authors or their successors thereafter, unless otherwise agreed upon in writing.
Article 27
Unless there is an agreement to the contrary, the physical or juristic person at whose initiative and under whose guidance a Collective Work is created may solely exercise the moral and economic rights to that Collective Work.Article 28- The Author's economic rights in relation to third parties
Unless otherwise agreed upon in writing, the Author's economic rights in relation to third parties shall be as follows:- If the Author creates the Work for the benefit of another person, the copyright belongs to the person in whose favour it was made.
- If the employee or worker, during his work, creates a Work related to the activities or Works of the employer and is instructed directly or indirectly by him or uses to reach the creation of this Work the experiences, information, tools, machines, or materials of the employer placed at his disposal, the Author’s economic rights shall be for the employer taking into account the intellectual effort of the worker.
- If the employee or worker creates a Work that is not related to the business of the employer and does not use the employer’s experiences, information, tools, or raw materials in reaching this Innovation, the Author’s economic rights shall be for the employee or worker.
Article 29- Joint author
1- Shall be considered as a joint author of an audio-visual, sound, or visual Work:a- The scriptwriter or the originator of the written idea for the Work. b- The party who modifies an existing literary Work to make it compatible with an audio-visual format.
c- The dialogist. d- The composer of the musical score, if his composition is made specifically for the Work in question. e- The director, if he exercised effective supervision over the completion of the Work.
- If the Work is derived or extracted from another previous work, the Author of the previous Work shall be considered a joint author of the new work.
- Unless otherwise agreed upon in writing, the Author of a literary or musical partition may publish his respective partition in a manner other than that specified for publishing the Joint Work.
- Failure by one of the parties contributing to the creation of an Audio-Visual Work to complete his part thereof, does not preclude the right of the other partners to use the part he has completed, without prejudice to the rights accruing to the former party from his contribution to the authorship.
- Throughout the period of use of an audio-visual, audio or visual Work that has been agreed upon, the producer shall be the representative of the Authors of such Work and of their successors in the agreement on the use of such work, without prejudice to the rights of the Authors of the extracted or adapted literary or musical Works, unless a written agreement is made to the contrary. The producer shall be deemed the publisher of such Work and shall be entitled to the publisher’s rights on it and on the copies thereof, within the purposes of financial use.
- If the Performer agrees to the Audio-Visual Fixation of his performance, the exclusive economic rights for licensing the use of the audio-visual fixed performance provided for in this Decree-Law shall be transferred to the producer of the Audio-Visual Fixation or whomever is authorised to exercise them, unless otherwise agreed in writing between the Performer and an Audio-Visual Fixation producer.
Article 30
The publisher of the Work shall be deemed authorised to exercise the rights stipulated in this Decree-Law in the event that the Work is anonymous or pseudonymous, unless the Author appoints another proxy or reveals his identity and proves his capacity or if there is no doubt as to his real identity.Article 31- Architectural copyrights
- Copyright in architectural designs shall be considered the property of the property owner or the like, unless explicitly agreed otherwise.
- The property owner or the like may make any improvements or changes to the existing building subject of the engineering drawings, designs, and plans in accordance with the legislation in force.
- Buildings may neither be attached nor their destruction, change of their characteristics or confiscation be ordered, for the purpose of preserving the architectural rights of the Author whose engineering designs, drawings or plans have been unlawfully used, without prejudice to his right to a fair compensation.
Undertaking Copyright Administration (Collective Administration)
Article 32
Owners of the copyright and Holders of Neighbouring Rights may delegate specialised professional associations to administer such rights or entrust other bodies with the exercise of such rights.Contracts concluded in this respect through such associations or bodies, shall be construed as civil contracts.
Article 33
The associations or bodies provided for in Article (32) of this Decree-Law shall not discriminate between the applicants requesting to conclude agreements therewith for the use of Works whose administration is entrusted to them. Shall not be considered discrimination the act of delivering, by the association or body, licences for use against reduced financial consideration, in the following two instances, provided their decision is justified:- Use of Works in public events through live performance.
- Use of Works within the framework of educational or cultural activities, which do not generate direct or indirect income.
Article 34
- Associations or bodies stipulated in Article (32) of this Decree-Law may not perform the activities of administering copyright and neighbouring rights unless after obtaining a permit from the Ministry.
- The Implementing Regulation of this Decree-Law shall specify the conditions, controls, and procedures for the permit, the obligations of the authorised person, and the administrative penalties to be imposed on the authorised person upon violation of the provisions of this Decree-Law and its Implementing Regulation. Actions to be Taken by the Court Against Infringing Works
Article 35
Notwithstanding the provisions of Federal Law no. (11) of 1992, the Magistrate of Summary Justice of theCompetent Civil Court may, at the request of the Author or his successor, and pursuant to an order on a petition, order the following procedures be taken in respect of each Work that has been published or displayed without written permission from the Author or his successor:
- Stopping the Publication, display, or production of the work.
- Effecting provisional seizure on the original or copies of the work, as well as on the materials that are used in re-publishing or reproducing such work, provided that such materials are not valid except for re-publishing or reproducing of the work
- Evidencing Public Performance as regards playing, acting, or reciting a Work to the public and preventing the going display or prohibiting it for the future.
- Effecting provisional seizure on the revenue resulting from Publication or display.
- Proving the fact of the infringement of any of the rights protected in accordance with the provisions of this Decree-Law.
Article 36
The person against whom the order mentioned in Article (35) of this Decree-Law was issued may file a grievance against it before the president of the court in which the order was issued within (15) fifteen days following the date of its issuance. In this case, the president of the court shall either confirm the order or cancel it totally or partially or appoint a receiver whose assignment is to re-publish the Work subject-matter of the dispute, use it, exhibit it or make copies thereof. The resulting revenue shall be deposited with the court’s treasury until adjudication of the dispute.Article 37- Grievances Committee
- A committee called “The Grievances Committee for Copyrights and Neighbouring Rights” shall be established at the Ministry under the chairmanship of a specialised judge nominated by the Minister of Justice, with the membership of two specialists chosen by the Minister, and it shall be competent to adjudicate grievances filed by the interested parties against the decisions issued by the Ministry.
- The Minister shall issue a decision designating the members of the Grievances Committee, its functioning system, and the procedures for filing grievances before it.
- Any interested party may file an appeal against the decision of the Grievances Committee before the Competent Court within (30) thirty days from the date of being notified thereof.
- In all cases, a lawsuit filed before the competent court requesting the cancellation of the decisions issued by the Ministry in application of the provisions of this Decree-Law shall not be accepted except after a grievance has been filed with the Grievances Committee.
Article 38- Customs clearance
- Subject to the legislation in force in the country, the customs authorities may, on their own or at the request of the Author, the right holder, their successors, or their representatives, may order by a reasoned decision not to clear customs - for a maximum period of twenty (20) days - in respect of any items in violation of the provisions of this Decree-Law.
- The customs authorities may not prevent the Author, the right holder, their successors, or their representatives from inspecting the items ordered not to be cleared by customs.
- The Implementing Regulation of this Decree-Law shall specify the conditions, controls, and procedures related to inspection and the filing of an application to stop the customs clearance and decide thereon. Penalties
Article 39
1- Without prejudice to any more severe penalty provided for in any other law, a penalty of imprisonment for a period of no less than (2) two months and a fine of no less than (10,000) ten thousand dirhams and not more than (100,000) one hundred thousand dirhams, or by either of these two penalties, shall be imposed on whomever, without the written permission of the Author or the Holder of the Neighbouring Right, or their successors, commits any of the following acts:- Infringing one of the moral or economic rights of the Author or the Holder of the Neighbouring Right stipulated in this Decree-Law, including making public any work, performance, Sound Recording, or broadcast programme that is covered by the protection stipulated in this Decree-Law, either through computers, internet, information and communication networks, or other means or devices.
- Selling, renting, or putting into circulation, in any manner, a Work, Sound Recording, or broadcast protected under the provisions of this Decree-Law, and the penalty shall be multiplied by the multiplicity of the Work, performance, programme, or recording, subject-matter of the crime.
Article 40
1- Without prejudice to any more severe penalty stipulated in any other law, a penalty of imprisonment for a period of no less than (6) six months and a fine of no less than (100,000) one hundred thousand dirhams and not more than (700,000) seven hundred thousand dirhams, or either of these two penalties, shall be imposed on whomever commits any of the following acts:a- Unlawfully manufacturing or importing, for the purpose of sale, rental or circulation, any counterfeit Work or copies thereof, any apparatuses, equipment, devices or materials specially designed or prepared for defrauding protection or technology used by the Author or the Holder of the Neighbouring Right for transmitting, putting into circulation, regulating or managing such rights, or preserving a specific standard of purity of the copies b- Unlawfully disrupting or impairing any technical protection or electronic data aiming at regulating and
managing the rights prescribed by this Decree-Law.
c- Downloading or storing in the computer any copy of the computer programme or applications thereof or databases, without obtaining a licence from the Author or right holder or successors thereof.
2- In case of recidivism, the penalty shall be imprisonment for a period of no less than (9) nine months and a fine of no less than (500,000) five hundred thousand dirhams and not more than (1,000,000) one million dirhams.
Article 41
Whoever uses a computer program, applications, smart applications, or databases without prior permission from the Author or his successor, shall be punished with a fine of no less than (30,000) thirty thousand dirhams and not more than (100,000) one hundred thousand dirhams, for each program, application, or database.In case of recidivism, the penalty shall be a fine of no less than (100,000) one hundred thousand dirhams, and not more than (1,000,000) one million dirhams.
If the crime is committed in the name or for the account of a juristic person or a commercial or professional establishment, the court may order the closure thereof for a period not exceeding (3) three months.
Article 42
Without prejudice to the penalties prescribed in Articles (39), (40) and (41) of this Decree-Law, the court shall order the confiscation and destruction of counterfeit copies, subject-matter of the crime, or copies reproduced therefrom, as well as the confiscation of the equipment and devices used in the perpetration of the offence, and which cannot be used for any other purpose, and may order the closure of the establishment in which the counterfeiting has been committed, for a period not exceeding (6) six months and the Publication of the summary of the conviction judgment in one or more daily newspapers at the expense of the convict.Article 43- Compensation in case of infringement of rights
The Author or the right holder shall have the right to claim compensation in case of infringement of his moral and economic rights in accordance with the general rules.Article 44- Exercising the copyright in the absence of an heir
The moral and economic rights of the Author and Performer over any Work shall devolve to the Ministry in the absence of an heir or legatee. The Ministry shall continue to exercise the moral rights stipulated in this Decree-Law with the aim of preserving the work, after the expiry of the period of protection of the economic rights prescribed for the work.Article 45- Photographs, sound, or visual recordings of others
Subject to Clause (9) of Article (2) of this Decree-Law, it shall not be permissible for anyone with whom it has been agreed to take photograph of another or sound or visual recording, in any way whatsoever, to keep, publish, exhibit, or distribute the original or Reproductions thereof without the permission of that person, unless otherwise agreed upon.An exception is made for publishing a photograph in the following cases:
- On the occasion of public events, unless Publication is prohibited by the competent authorities.
- If it is related to the coverage and photography of the events and activities of government agencies that are held for the public in a public place.
- If the competent authorities have authorised such Publication in the service of the public interest.
In all cases, the person portrayed in the photograph, his successor or the entity he represents if the photograph is in the course of performing his work, may authorise its Publication in the various means of Publication, its exploitation or its use, even without the photographer's permission, unless otherwise agreed upon.
Article 46- Obligation of national carriers
Without prejudice to any provision stated in this Decree-Law, national carriers, including planes, ships, and trains, shall abide by the provisions hereof.Article 47- Supervision and control
The Ministry shall supervise and control the implementation of the provisions of this Decree-Law, and the control of crimes and violations that occur in violation of its provisions. A Cabinet decision - based on a proposal by the Minister - may entrust any of the competent local authorities with these tasks or some of them.Article 48- Law enforcement capacity seizure
The employees of the Ministry or the employees of the local authorities who are designated by a decision of the Minister of Justice in agreement with the Minister or the head of the local judicial authority shall be granted the capacity of law enforcement officers in proving violations of the provisions of this Decree-Law or its Implementing Regulation, within the scope of their respective competenciesArticle 49- Fees
The Council of Ministers shall issue a decision determining the fees necessary to implement the provisions of this Decree-Law.Article 50- The Implementing Regulation
The Council of Ministers, based on a proposal by the Minister, shall issue the Implementing Regulation for this Decree-Law.Article 51- Executive decisions
The Minister shall issue the necessary decisions to implement the provisions of this Decree-Law.
Article 52- Abrogation
- Federal Law no. (7) of 2002 on Copyrights and Neighbouring Rights and its amendments shall be abrogated.
- Every provision that violates or contravenes the provisions of this Decree-Law shall be abrogated.
- Decisions and regulations in force prior to the entry into force of the provisions of this Decree-Law shall continue to be in force, in a manner that does not conflict with its provisions, until the issuance of their replacement in accordance with the provisions of this Decree-Law.
Article 53- Publication and entry into force of the Decree-Law
This Decree-Law shall be published in the Official Gazette and shall come into force as of 2 January 2022.Issued by us at the Presidential Palace in Abu Dhabi:
On 13/Safar/1443H.
Corresponding to 20/September/2021
Khalifa bin Zayed Al Nahyan
President of the United Arab Emirates
The present Decree-Law was published in the Official Gazette of the United Arab Emirates, issue no. 712 Annex dated 26/06/2021, p. 427.
Federal Decree-Law no. (36) of 2021
Issued on 20/09/2021
Corresponding to 13/Safar/1443H.
ON TRADEMARKS
Abrogating:Federal Law no. (37) of 1992.
We, Khalifa bin Zayed Al Nahyan, President of the United Arab Emirates,
- Pursuant to the perusal of the Constitution;
- Federal Law no. (1) of 1972 on the Competencies of the Ministries and Powers of the Ministers and its amendments;
- Federal Law no. (5) of 1985 promulgating the Civil Transactions Law and its amendments;
- Federal Law no. (11) of 1992 promulgating the Civil Procedure Law and its amendments;
- Federal Law no. (35) of 1992 promulgating the Criminal Procedure Law and its amendments,
- Federal Law no. (37) of 1992 on Trademarks and its amendments;
- Federal Law no. (18) of 1993 promulgating the Commercial Transactions Law and its amendments;
- Federal Law no. (1) of 2006 on Electronic Commerce and Transactions and its amendments;
- Federal Law no. (19) of 2016 on Anti-Commercial Fraud;
- Federal Decree no. (67) of 2021 on the State’s accession to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks;
- Federal Decree-Law no. (31) of 2021 promulgating the Crimes and Penalties Law;
- Federal Decree-Law no. (32) of 2021 on Commercial Companies; and
Issue the following Decree-Law:
Chapter 1
Definitions and General Provisions
Article 1
In implementing the provisions of this Decree-Law, the following terms and expressions shall have the meanings assigned against each of them, unless the context requires otherwise:State: The United Arab Emirates.
Ministry: The Ministry of Economy.
Minister: The Minister of Economy.
Grievances Committee: The Trademarks Grievances Committee, established by a decision of the Minister in accordance with the provisions of Article (14) of this Decree-Law.
Competent Court: The Federal Court of Appeal.
Civil Court: The Federal or Local Court of First Instance, as the case may be.
Hologram Marks: A photographic recording of a field of light, used to display a three-dimensional photo of the object taken in a holographic manner. The photographed mark shall be a single view of the sign in which the entire trace of the hologram appears, or several views of the hologram from different angles when needed.
Collective Trademark: The mark used to distinguish the goods or services of establishments belonging to members of a specific entity enjoying a juristic personality.
Geographical Indications: Any indication showing that a good has originated in the territory of a member country of the World Trade Organisation or in a region, location, or place of that region if the good’s quality, reputation, or other characteristics are primarily due to its geographical origin.
Register: The Trademarks Register.
Drawing: Any design including a group of visuals (any artwork).
Symbol: Any one visual Drawing.
Engravings: Salient marks.
Pictures: Pictures of a person, whether that of the project owner or any other person.
Ministry’s Bulletin: The Trademark Bulletin issued by the Ministry. This bulletin may be electronically published on the Ministry’s website.
Article 2
A Trademark is everything that takes a distinctive shape of names, words, signatures, letters, Symbols, numbers, addresses, seals, Drawings, Pictures, Engravings, packaging, graphic elements, forms, colour or colours or a combination thereof, a sign or a group of signs, including three-dimensional marks, Hologram Marks, or any other mark used or intended to be used to distinguish the goods or services of a facility from the goods or services of other facilities, or to indicate the performance of a service, or to conduct monitoring or examination of goods or services.. A distinctive sound or smell may be considered as a Trademark.Article 3
The following shall not be considered or registered as a Trademark or a part thereof:- A mark having no property or distinctive character or made of data being only the name given by custom to goods and services or the familiar Drawings and ordinary Pictures of goods and services.
- Expressions, Drawings, or marks breaching the public morals or violating the public order.
- Public emblems, flags, military and honour emblems, national and foreign decorations, coins, banknotes, and other Symbols of the State, or other countries, or Arab or international organisations or one of their institutions, or any imitation thereof.
- Symbols of the Red Crescent or Red Cross and such other similar logos and the marks being an imitation thereof.
- Marks that are identical or similar to Symbols having a religious nature.
- Geographical names and data if their use would create confusion as to the origin or source of the goods or services.
- The name, nickname, Picture or logo or surname of a third party unless he or his heirs approve its use beforehand.
- Particulars of honorary degrees or academic degrees to which a registration applicant does not prove his legal entitlement.
- Marks that are liable to mislead the public or contain false information as to the origin or source of the goods or services, or as to their other characteristics, as well as Trademarks that contain a trade name owned by others.
- Marks owned by physical or juristic persons with whom dealing is prohibited in accordance with the legislation in force in the State.
- A Trademark that is identical or similar to another Trademark previously filed or registered by a third party for the same goods or services or related goods or services if the use of the Trademark to be registered would create the impression that they are linked with the goods or services of the registered Trademark owner or leads to harming his interests.
- Marks whose registration for some goods or services results in reducing the value of the goods or services distinguished by a previous Trademark.
- Marks that constitute copies, imitations, translations, localisations, or any audio translation of a well-known Trademark or part thereof owned by others, for use in distinguishing goods or services identical or similar to those that use a well-known Trademark to distinguish them.
- Marks that constitute copies, imitation, translation, localisation, or any audio translation of a well-known Trademark owned by others, or an essential part thereof, for use in distinguishing goods or services that are not identical or similar to those distinguished by the well-known Trademark, if such use indicates that there is a link between those goods or services and the well-known Trademark and if the registration of such a Trademark is likely to harm the interests of the owner of the well-known Trademark.
- Marks that include the following terms or expressions: Concession, Concessionaire, Registered, Registered Drawing, Copyright, or other similar terms and expressions.
- Any three-dimensional mark consisting of a shape resulting from the nature of the goods specified in the registration application or necessary to achieve a technical result; without any substantive elements that distinguish it from others.
Article 4- Registering a well-known Trademark
- A well-known Trademark whose reputation has exceeded the borders of the country in which it was registered to other countries, may not be registered for identical or similar goods or services unless an application is submitted to that effect by the owner of the well-known Trademark or with his approval.
- In order to determine whether a Trademark is well-known, the extent to which it is known to the concerned public as a result of its promotion, the period of its registration, its use, the number of countries in which it is registered or well-known, its value, or the extent of its impact on the promotion of goods or services that use the well-known Trademark to distinguish them, shall be taken into account.
- Well-known Trademarks may not be registered to distinguish goods or services that are not identical or similar to those distinguished by these Trademarks in the following two cases:
distinguished and the goods or services of the owner of the well-known Trademark. b- If the use of the Trademark would harm the interests of the owner of the well-known Trademark.
Chapter 2
Trademark Registration and Cancellation
Article 5- Trademarks Register
A register called “Trademarks Register” shall be prepared in the Ministry wherein shall be recorded all the Trademarks, names, addresses and type of activities of their owners, the descriptions of their goods or services and any transfer, assignment, transfer of ownership, mortgage or licence for use concerning such Trademarks as well as any other changes therein.Each person may request a copy of the data recorded in the Register after paying the prescribed fees.
Article 6- The right to register a Trademark
Any physical or juristic person shall have the right to register his/its Trademark, in accordance with the provisions of this Decree-Law.Article 7- Trademark registration application
An application for registering a Trademark shall be submitted to the Ministry in accordance with the conditions, controls, and procedures specified in the Implementing Regulation of this Decree-Law.Article 8- Registering a Trademark for more than one category
- A Trademark may be registered for one or more categories by filing an application for one of the categories of the goods or services in accordance with what is specified in the Implementing Regulation of this Decree-Law.
- Goods or services shall not be considered similar to each other for the mere reason that they are listed in the same category, nor shall they be considered different from each other for the mere reason that they are listed in different categories of the same classification specified by the Ministry.
Article 9- Registration of a group of identical Trademarks
One application may be filed to register a group of Trademarks if they are identical as to their essential elements and differ only in ways that do not affect their character such as colour of the marks or the details of the goods or services related thereto, provided that these goods or services belong to the same category.Article 10- Registration of a single Trademark by two or more persons
In case of two or more persons simultaneously apply for the registration of the same Trademark or similarTrademarks for the same category of goods or services, the registration applications shall be suspended until one of of the disputing parties submits a waiver of his application in favour of the other party or until a final judgment is rendered by the Competent Court in the dispute.
Article 11- Right of priority in Trademark registration
If the Trademark applicant or his successor wishes to enjoy the priority right to register the Trademark based on a previous application filed in a member state of the Paris Convention on Industrial Property or a multilateral international agreement to which the State or one of the countries of the Cooperation Council for the Arab States of the Gulf is a party, or a bilateral international agreement to which the State is a party, he shall attach to his application a copy of the previous application and an acknowledgment stating the date of the previous application, its number and the country in which it was filed, within six (6) months of the date on which he filed the registration application on account of which he claims the priority right, otherwise his right to the claim shall be forfeited.Article 12- Some Controls and Procedures for the registration of Trademarks
- The Ministry may impose the restrictions and amendments it deems necessary to identify the Trademark and prevent its confusion with another Trademark that has been previously registered or an application for its registration has been previously filed.
- If the registration applicant fails to respond to the Ministry within (30) thirty days from the date of his notification of the restrictions or amendments set by the Ministry to identify the Trademark and prevent its confusion with another Trademark, he shall be deemed as having waived his application.
- The Ministry shall decide on the registration application within (90) ninety days from the date of its filing, provided that it fulfils the conditions stipulated in this Decree-Law and its Implementing Regulation.
- If the Ministry refuses to register a Trademark for any reason whatsoever or if the registration thereof is subject to the imposition of certain restrictions or amendments, it shall notify the applicant or his representative in writing of the reasons for its decision. Such notification may be made by modern electronic means.
- The Implementing Regulation of this Decree-Law shall specify the procedures and other controls for registering Trademarks.
Article 13- Grievance against the rejection or suspension of registration
- The registration applicant or the owner of the Trademark or his representative may file a grievance with the Grievance Committee against the Ministry’s decision rejecting or suspending the registration within (30) thirty days from the date of being notified thereof, and he may file an appeal against the decision of the Grievance Committee before the Competent Court within (30) thirty days from the date of his notification thereof.
- If the registration applicant does not file a grievance against the decision rejecting his application within the time limit stipulated in the preceding clause, or fails to fulfil the conditions to which his application is subject within the time limit stipulated in clause (1) of this article, he shall be deemed as having waived his application.
- In all cases, the lawsuit filed to cancel the Ministry's decision rejecting or suspending the registration of the Trademark shall not be accepted unless a grievance has been previously filed against it.
Article 14- Grievances Committee
- A committee called “Trademarks Grievances Committee” shall be established at the Ministry under the chairmanship of a specialised judge nominated by the Minister of Justice with the membership of two specialists chosen by the Minister. This committee is responsible for adjudicating grievances submitted by the concerned parties against the decisions issued by the Ministry in implementation of the provisions of this Decree-Law and its Implementing Regulation and the decisions issued in implementation thereof.
- The Minister shall issue a decision nominating the members of the Grievance Committee, its functioning system, and the procedures for filing grievances before it.
Article 15- Publication of the Trademark
- If the Ministry accepts the registration of the Trademark, it shall, prior to its registration, publish it in the Ministry’s Bulletin at the expense of the registration applicant in accordance with the procedures specified by the Implementing Regulation of this Decree-Law, provided that the last date for filing an objection against the registration of the Trademark is stated in this Bulletin.
- Any interested party may, within (30) thirty days from the date of publication, file an objection with the Ministry against the registration of the Trademark, in accordance with the procedures and means specified by the Implementing Regulation of this Decree-Law.
Article 16- Procedures for deciding on objection applications filed with the Ministry
The Implementing Regulation of this Decree-Law shall define the procedures followed by the Ministry to decide on applications for objections submitted thereto.The provisions relating to grievance and appeal stipulated in Article (13) of this Decree-Law shall be applied to the Ministry's decision rejecting the objection.
A grievance or an appeal against the decision rejecting the objection shall not result in the discontinuation of the Trademark registration procedures, unless the Competent Court decides to stay the execution of the decision issued to register the Trademark, subject-matter of the objection.
Article 17- Trademark registration certificate
1- Registration of a Trademark shall be effective from the date of filing the application for registration, and the Trademark owner shall be given a certificate containing the following data:a- The Trademark registration number. b- The priority number and date, and the state in which the application was filed, if any.
- The date of submitting the application, the date of registration of the Trademark, and the date of expiry of the
- The name, surname, place of residence, and nationality of the Trademark owner. e- A copy of the Trademark. f- Details of the goods or services and the category for which the Trademark is registered.
Article 18- Trademark ownership and dispute
- Whoever registers a Trademark shall be deemed its sole owner. The ownership of such Trademark may not be disputed when its registration and use are continuous for at least (5) years from the date of its registration without an action being lodged against it, unless it is proven that the person who registered it is mala fide.
- The first person to use the Trademark registered in his name with the Ministry may request the Ministry to cancel this registration within (5) five years from the date of registration, unless he expressly or implicitly consents to the use of the Trademark by the person in whose name it is registered.
Article 19- Trademark modifications
- The owner of a previously registered Trademark may, at any time, apply to the Ministry for introducing any addition or modification to the form of the Trademark, goods, or services provided that this does not significantly affect the substance of the Trademark. The Ministry's decision in this regard shall be issued according to the procedures prescribed in the Implementing Regulation of this Decree-Law.
- The Ministry's decision rejecting the addition or modification shall be governed by the provisions related to grievance and appeal stipulated in Article (13) of this Decree-Law.
Article 20- Amendment to the Register
- The Ministry may, on its own or at the request of the concerned party, add any statement that has been omitted to the register, or delete or amend any statement contained in the Register if it has been unlawfully entered or is inconsistent with the truth.
- The Ministry's decision to amend a statement or delete it from the Register shall be governed by the provisions related to grievance and appeal stipulated in Article (13) of this Decree-Law.
Article 21- Trademark protection period and extension thereof
- The period of protection resulting from the registration of a Trademark is (10) ten years starting from the date of filing the application. If the right holder wishes to renew the protection for similar periods, he may file an application to renew the Trademark registration with the Ministry during the periods, and in accordance with the conditions and procedures specified by the Implementing Regulation of this Decree-Law.
- The Trademark registration shall be renewed without further examination, and it shall be published in the Ministry's Bulletin.
Article 22- Procedures and fees for the registration renewal application
- The Implementing Regulation of this Decree-Law shall determine the time limit during which the Trademark owner shall file an application for renewal of the protection period with the Ministry and specify the procedures and fees for such renewal.
- If the time limit prescribed by the Implementing Regulation of this Decree-Law to renew the protection period lapses without the Trademark owner filing an application for renewal of the protection period, the Trademark shall be considered cancelled from the Register as of the date of expiry of the protection period.
Article 23- Temporary protection of Trademarks placed on goods and services displayed in exhibitions
Trademarks placed on goods or used on services on display at official or officially recognised international exhibitions that are held inside the State, shall enjoy, during the period of their display, a temporary protection if they meet the conditions for registering Trademarks and the rules and procedures for granting temporary protection specified by the Implementing Regulation of this Decree-Law.Article 24- Cancellation of the Trademark
- The Trademark owner may request the Ministry to remove the Trademark from the Register, for all or part of the goods or services for which the Trademark was registered.
- The owner of a well-known Trademark whose reputation exceeds the borders of the country and is similar to a Trademark registered with the Ministry may request the Ministry to cancel the Trademark registered therewith within (5) five years from the date of its registration, unless it is proven that the person who registered it is mala fide.
- Any interested party may request the Ministry to cancel the Trademark that has not been used for (5) five consecutive years, unless there are emergency circumstances that prevented the use of the Trademark.
- The Ministry may, on its own or at the request of the interested parties, cancel the Trademark that is registered in violation of the provisions of this Decree-Law, or in the cases specified by its Implementing Regulation.
- If the Trademark is licensed to be used in accordance with a contract that has been entered or notated in the Trademarks Register, the Ministry may cancel this Trademark at the request of its owner, unless the contract stipulates the consent of the beneficiary to the cancellation, without prejudice to the text of Article (31) of this Decree-Law.
- The Implementing Regulation of this Decree-Law shall specify the conditions, terms, and procedures for filing the applications referred to in this article and the mechanism for deciding thereon.
- The Ministry's decision to cancel the Trademark or reject the application for cancellation shall be governed by the provisions related to grievance and appeal stipulated in Article (13) of this Decree-Law.
Article 25- Publishing the cancellation and renewal of the Trademark
The cancellation and renewal of the Trademark shall be published in the Ministry’s Bulletin and by any publication mean specified by the Implementing Regulation of this Decree-Law.Article 26- Amendments to the Register
The Competent Court may, at the request of the interested party, order the addition of any statement that has been omitted to the Register, or the deletion or amendment of any statement contained in the Register, if it has been unlawfully entered or is inconsistent with the truth. Also, the Ministry may do so on its own.Article 27- Re-registration of the Trademark
If a Trademark is removed from the register, it may not be re-registered for the benefit of others for the same goods or services or for similar goods or services except after the lapse of (3) three years from the date of cancellation, unless the cancellation was made based on a judgment of the Competent Court, and the judgment provides for a shorter period for the re-registration of the Trademark.Chapter 3
Assignment, Transfer of Ownership and Mortgage of the Trademark
Article 28
- The Trademark registration application may be assigned, and the ownership of the registered Trademark may be transferred, with or without consideration. Also, the Trademark may be mortgaged or attached with the commercial shop or exploitation project in which the Trademark is used to distinguish its goods or services unless otherwise agreed upon.
- The Trademark ownership is transferred by inheritance, will, gift, or any other legal form.
- In all cases, the transfer of the Trademark’s ownership, mortgage or attachment thereof shall not be enforceable against third parties unless it has been entered into the Register and announced by any means of publication, in accordance with the procedures and conditions specified in the Implementing Regulation of this Decree-Law.
Article 29
- The transfer of ownership of the commercial shop or the exploitation project includes the Trademarks registered in the name of the owner of the shop or the project, whenever they are closely related to the commercial shop or the exploitation project, unless otherwise agreed upon.
- If the ownership of the commercial shop or the exploitation project is transferred without the Trademark itself, the transferor of ownership may continue to manufacture the same goods or provide the same services for which the Trademark was registered, or trade therein, unless otherwise agreed upon.
Contracts Licensing the Use of the Trademark
Article 30
- The owner of the Trademark may use it himself, and he may also license one physical or juristic person or more to use the Trademark for all or some of the goods or services for which it is registered, unless otherwise agreed upon, and in accordance with the procedures and controls stipulated in the Implementing Regulation of this DecreeLaw.
- The duration of the licence may not exceed the period prescribed for the Trademark protection in accordance with the provisions of this Decree-Law.
Article 31- Conditions of the contract licensing the use of the Trademark
The contract licensing the use of the Trademark shall be made in writing and documented, and it is not required that a notation or registration thereof be made in the Register. The Implementing Regulation of this Decree-Law shall specify the controls for notation or registration in the Register in the event that any of the concerned parties so requests.Article 32- Deleting the licence entry from the Register
The registration of the licence shall be deleted from the Register at the request of the Trademark owner, the licensee, or a representative of either of them, after submitting evidence as to the expiration or termination of the licensing contract. The Ministry shall notify the other party of the application submitted to delete the licence, and this party may object to the application for deletion, in accordance with the procedures and conditions stipulated in the Implementing Regulation of this Decree-Law.Article 33- Restrictions on the licence for the Trademark use
Restrictions may not be imposed on the beneficiary of the licence to use the Trademark that do not result from the rights conferred by the Trademark registration or are not necessary to preserve these rights. However, the licence contract may include the following restrictions:- Determining the scope of the territory or the term of use of the Trademark.
- The requirements for effective quality control of goods or services.
- The obligations imposed on the beneficiary of the licence to refrain from any actions that may result in abusing the Trademark.
Article 34
The beneficiary of the licence to use the Trademark may not assign it to others or grant sub-licences unless otherwise agreed upon with the Trademark owner.Chapter 5
Collective Trademarks, Control Marks,
Insignia of Public Interest and Professional Organisations
Article 35- Collective Trademarks
- The Implementing Regulation of this Decree-Law shall specify the conditions and controls for registering and using Collective Trademarks.
- The Collective Trademark may not be re-registered for the benefit of third parties in the event of its cancellation for identical or similar goods or services.
- The Ministry may, at the request of the interested party, cancel the registration of a Collective Trademark if it is proven to the Ministry that the owner who registered it is using it himself, or that he is using it or allowing it to be used in violation of the conditions specified in the Implementing Regulation of this Decree-Law, or is using it in a way that is likely to mislead the public as to the origin of the good or any common characteristic of the goods or services in respect of which the Collective Trademark is registered.
Article 36- Trademark registration for monitoring or inspection purposes
- Juristic persons who are in charge of monitoring or inspecting some goods or services in terms of their source, components, method of manufacture, quality, substance or any other characteristic, may request the Ministry to register a Trademark for them so as to indicate the monitoring or inspection procedure, in accordance with the conditions and controls specified by the Implementing Regulation of this Decree-Law. In all cases, the owner of the registered Trademark shall notify the Ministry of any changes in these requirements.
- The registration of this Trademark shall have all the effects stipulated in this Decree-Law, and it is not permissible to re-register the said Trademark in the event that it has been cancelled or not renewed, for similar or identical goods or services.
Article 37- Registration of the Trademark for non-commercial purposes
- A Trademark may be registered for non-commercial purposes, such as emblems used by public interest or professional institutions to distinguish their services or badges for their members, in accordance with the conditions and controls specified in the Implementing Regulation of this Decree-Law.
- The registration of this Trademark shall have all the effects stipulated in this Decree-Law, and it is not permissible to re-register the said Trademark in the event that it has been cancelled or not renewed, for similar or identical goods or services.
Geographical Indications
Article 38- Types of Geographical Indications
The registration of Geographical Indications as a Trademark shall be in accordance with the provisions of this Decree-Law and its Implementing Regulation.A Geographical Indication may be a sign or a group of signs in any form whatsoever such as words, including geographical or personal names, letters, numbers, holographic elements, colour or colours.
Article 39- Prohibitions
Every physical or juristic person is prohibited from doing the following:- Using any means in naming any commodity or displaying it in a way that suggests that its geographical origin is not the real one, leading to confusing the public as to this origin.
- Using a Geographical Indication in a way that is considered unfair competition in accordance with the Paris Convention for the Protection of Industrial Property or in accordance with the international laws and agreements in force in the State.
Article 40- Protection of Geographical Indications
Geographical Indications shall enjoy the protection stipulated in this Decree-Law as long as these indications are protected in the country of origin.Article 41
All Geographical Indications with similar names shall enjoy the protection stipulated in this Decree-Law, provided that their products are treated fairly, and the consumers thereof are not misled.Article 42- Register of Geographical Indications
The Ministry shall prepare a register called the Geographical Indications Register in which the Geographical Indications whose registration is accepted along with all the data related thereto and the actions made in their respect shall be recorded in accordance with the provisions of this Decree-Law.Article 43- Cases of non-registration of the Geographical Indication
A Geographical Indication shall not enjoy the protection prescribed for a Trademark, and it may not be registered in any of the following cases:- If the Geographical Indication is likely to cause confusion with a Trademark that is the subject-matter of an application for registration under consideration in good faith.
- If the Geographical Indication is likely to cause confusion with a pre-existing Trademark and rights have been acquired in respect thereof through its bona fide use in the State.
- If the registration of the Geographical Indication as a Trademark is not permissible according to the provisions of this Decree-Law.
Article 44- Applicability of provisions to Geographical Indications
Without prejudice to the provisions of bilateral and international agreements in force in the State, the provisions related to Trademarks and those stipulated in this Decree-Law and its Implementing Regulation regarding the following shall apply to Geographical Indications:- Submission of a registration application.
- Examination of the registration application and acceptance or rejection of the application.
- Objection to registration.
- Deletion and cancellation of the registration.
- Transfer of ownership of the Geographical Indication and licensing its use and attaching it.
- Compensation for the infringement of rights established under the provisions of this Decree-Law.
Customs Clearance
Article 45
- Subject to the legislation in force in the State, the customs authorities, on their own or at the request of the right holder or his representative, may order by a reasoned decision not to clear customs - for a maximum period of twenty (20) days - in respect of any items in violation of the provisions of this Decree-Law.
- The customs authorities may not prevent the right holder from inspecting the items ordered not to be cleared by customs.
- The Implementing Regulation of this Decree-Law shall specify the conditions, controls, and procedures related to inspection and the filing of an application to stop the customs clearance and decide thereon.
Article 46- Exceptions
The following are excluded from the provisions of Article (45) of this Decree-Law:- Small quantities of a non-commercial nature of goods that are placed in the personal baggage of travellers or are sent in small parcels.
- Goods offered for trade in the markets of the exporting country by the owner of the Trademark or with his consent.
Article 47- Provisional measures upon infringement of rights
1- The right holder may, in case of infringement or in order to avoid an imminent infringement of any of the rights established under the provisions of this Decree-Law, obtain an order on a petition from the Magistrate of Summary Justice at the Civil Court with jurisdiction over the origin of the dispute, so as to take one or more appropriate provisional measures, including the following:- Making a detailed description of the infringement, the goods that are the subject-matter of this infringement,
- Imposing seizure on the materials, tools and equipment referred to in the preceding paragraph of this clause,
- Preventing the goods that are the subject matter of the infringement from entering commercial channels and
- Preserving any evidence related to the subject matter of the infringement.
- The Magistrate of Summary Justice may instruct the petitioner to submit whatever evidence in his possession suggesting that the right has been infringed or that the infringement is imminent, and to provide information that is sufficient to implement the provisional measure and identify the goods concerned.
- The Magistrate of Summary Justice shall decide on the petition within a period not exceeding (10) ten days from the date of its filing, save for exceptional cases that he deems appropriate.
- The Magistrate of Summary Justice may, when necessary, issue the order, at the request of the petitioner, without summoning the other party, if it is likely that the delay in issuing the order may cause irreparable harm to the plaintiff or if there is a fear that the evidence will be lost or destroyed. In this case, the other party shall be notified of the matter without any delay forthwith upon its issuance, and when necessary, the notification may be made immediately after execution of the order.
- If the Magistrate of Summary Justice orders that a provisional measure be taken without summoning the other party, the defendant may, after being notified thereof, file a grievance against said order before the president of the court that issued it, within (15) fifteen days from the date of his notification thereof, and the president of the court in this case may confirm or modify or cancel the order.
- The Magistrate of Summary Justice may instruct the petitioner to provide an appropriate financial guarantee or a bank guarantee sufficient to protect the defendant from abuse of the right, and the amount of the guarantee or bank guarantee shall be reasonable and appropriate.
- The right holder may file a lawsuit in respect of the origin of the dispute within (20) twenty days from the date of the issuance of the order to take the provisional measure or from the date of his notification of the rejection of the grievance stipulated in clause (5) of this article, as the case may be, otherwise this order shall be cancelled at the request of the defendant.
Article 48- Claim for compensation
The Trademark owner incurring damage resulting from the infringement of any of his rights stipulated under the provisions of this Decree-Law, may file a lawsuit with the Civil Court to claim compensation in accordance with the general rules.Chapter 8
Penalties
Article 49
Without prejudice to any severer penalty stipulated in any other law, a penalty of imprisonment and a fine of no less than (100,000) one hundred thousand dirhams and not more than (1,000,000) one million dirhams, or either of these two penalties, shall be imposed on whomever:- Forges a Trademark that was registered in accordance with the provisions of this Decree-Law or counterfeits a Trademark in a way that leads to confuse the public, whether in respect of the goods or services distinguished by the original Trademark or those that are similar thereto.
- Knowingly uses a forged or counterfeit Trademark for commercial purposes.
- Puts on his goods or uses in respect of the services he provides, in bad faith, a Trademark owned by others.
- Possesses tools or materials with the intent of using them to forge or counterfeit registered or well-known Trademarks.
- Knowingly imports or exports goods bearing a forged or counterfeit Trademark.
Article 50
Without prejudice to any more severe penalty stipulated in any other law, a penalty of imprisonment not exceeding one year and a fine of not less than (50,000) fifty thousand dirhams and not more than (200,000) two hundred thousand dirhams or either of these two penalties shall be imposed on whomever:- Sells or offers for sale or circulation or possesses with the intention of selling goods or offers the provision of services carrying a forged, an imitated, or unlawfully put or used Trademark, despite his knowledge thereof.
- Unlawfully uses an unregistered Trademark in the cases stipulated in Article (3) of this Decree-Law on his commercial papers and documents, goods, or services, and this would lead to the belief that the Trademark has been registered.
Article 51
In the event of recidivism, whoever commits any of the acts stipulated in Articles (49) and (50) of this DecreeLaw shall be punished with a penalty that does not exceed twice the maximum penalty prescribed for the crime.The court may order the closure of the facility, and order the confiscation of the tools, machines, and materials used in the offence.
Article 52
The court may publish the judgment of conviction at the expense of the convict.
Chapter 9
Final Provisions
Article 53
- The Trademarks registered in accordance with the provisions of the laws, decisions, and regulations in force prior to the effective date of the provisions of this Decree-Law shall be deemed valid, and these Trademarks shall enjoy the protection prescribed therein.
- The provisions of this Decree-Law shall apply to the undecided Trademark registration applications that were submitted prior to the date of entry into force of its provisions, provided that these applications are amended in accordance with the provisions of this Decree-Law.
Article 54- The electronic system for registering Trademarks
- The Ministry may establish an electronic system and an electronic database available to the public to register and renew Trademarks and complete the necessary procedures therefor.
- The Ministry shall make the aforementioned electronic database available to the competent local authorities.
Article 55- Supervision and control
The Ministry shall supervise and control the implementation of the provisions of this Decree-Law, and the control of offences and breaches that occur in violation of its provisions. A Cabinet decision - based on a proposal by the Minister - may entrust any of the competent local authorities with these tasks or some of them.Article 56- Law enforcement officers
The employees of the Ministry or the employees of the local authorities who are designated by a decision of the Minister of Justice in agreement with the Minister or the head of the local judicial authority shall be granted the capacity of judicial enforcement in evidencing the violations of the provisions of this Decree-Law or its Implementing Regulation, within the scope of their respective competencies.Article 57- Fees
The Council of Ministers shall issue a decision determining the fees necessary to implement the provisions of this Decree-Law.Article 58- Implementing Regulation
The Council of Ministers shall, upon the proposal of the Minister, issue the Implementing Regulation for this Decree-Law.Article 59- Implementing decisions
The Minister shall issue the necessary decisions to implement the provisions of this Decree-Law.
Article 60- Abrogation
- Federal Law no. (37) of 1992 on Trademarks and its amendments shall be abrogated.
- Any provision that violates or contradicts the provisions of this Decree-Law shall be abrogated.
- The decisions and regulations in force prior to the date of entry into force the provisions of this Decree-Law, , shall remain effective in a manner that does not conflict with its provisions, until the issuance of their replacement pursuant to the provisions of this Decree-Law.
Article 61- Publication and entry into force of the Decree-Law
This Decree-Law shall be published in the Official Gazette and shall come into force as of January 2, 2022.Issued by us at the Presidential Palace in Abu Dhabi:
On 13/ Safar/ 1443H. Corresponding to 20/ September/ 2021
Khalifa bin Zayed Al Nahyan
President of the United Arab Emirates
The present Decree-Law was published in the Official Gazette of the United Arab Emirates, issue no. 712 Annex dated 26/09/2021, p. 395.
