Earlier in September 2020, the UAE Cabinet issued decree number 15 of 2020, “The Decree”, and introduced several progressive amendments to Federal Law No 3 of 1987 of the Penal Code “The Amendment”, which will have a significant impact on the personal and family lives of expats and UAE residents.
One of the biggest changes under the reforms is that the consumption of alcohol is no longer a criminal offence similar to what the original text would read. Although licensed venues were permitted to serve alcohol to non-Muslim customers in the past, by law, the individual was required to hold a license to consume alcohol. However, in practice, there was no enforcement of this rule and individuals were only prosecuted or penalized for not holding a license where another offence was committed.
Over the past few years, the process to obtain a license, especially for individuals and personal consumption, had become easier, and last year the prerequisite of Employer consent was removed from applications. Earlier this year, tourists were permitted to purchase alcohol from the designated alcohol stores upon showing the entry stamp in their passport. However, once The Amendment is enforced,
a license for individuals is not required in the UAE. According to Article 313 (BIS) of The Decree, there shall be no punishment for consuming, possession or trading in alcohol drinks in the situations and at places allowed as per applicable legislations. Each Emirate, however, is eligible to impose its own internal regulations regarding the provision and sale of alcohol and the amendment of the penal code reserved this right.
For trademark owners and despite the fact that filing under class 33 is still unavailable, the progressive approach and attitude of the UAE Cabinet towards alcohol has permeated through to other public offices, including the Trademark Office. Until more recently, the UAE Trademark Office would typically reject any class 43 applications which contained ‘bar services’
or similar terms that alluded to the provision or sale of alcohol. However, in recent trademark applications we have filed itand secured its registration, we have found that the Trademark Office are now practically willing to consider and accept this term, which will more accurately protect the business offerings of many brand owners in the UAE.
As such, we noticed that service providers can file and register their trademark to protect ‘bar services’ in the UAE. Brand owners, who may be interested in protecting such services, can move and file their marks accordingly. It remains discretionary to the Trademark Office to accept or reject but from many examples, we noted that such applications have better chances of acceptance more than any time before.
Brand owners who hold existing registrations in the UAE will not be prevented from benefitting from this practical reform in UAE Trademark office practice, as it is possible to file a specification amendment to an existing registration to include the term. We do urge, however, to proceed with a fresh filing for technical and examination reasons.
Whilst the above is demonstrative of more leniency shown towards alcohol, given the Federal decriminalization of alcohol products we expect further reforms to occur at the Trademark Office. Whilst trademark applicants offer alcohol products would typically file, if at all, in class 32 for Beer (malt liquor), mineral and carbonated water and other non-alcoholic beverages, fruit drinks and fruit juices, syrups and other preparations for making beverages,
filing for services class 43 would be a good option now to obtain protection for relevant classes and services.
Given the recent developments at Federal level, we anticipate that the Trademark Office will consider revisiting trademark filings in Class 33, which may allow brand owners in this industry to more appropriately protect their trademark(s) in the UAE under the relevant class.
Authored by Munir Suboh
, Partner & Head of Intellectual Property and Felicity Hammond