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The Latest Legal & Regulatory updates impacting Intellectual Property in the UAE

In keeping with the UAE’s strategic objectives and improving its legislative landscape to meet all modernization criteria, the UAE has endeavoured to improve and enhance all IP legislations over the course of the past two years. The UAE marked its 50-year anniversary with the amendment of many of its laws, all with a focus of increasing the internationalization of the UAE. In respect of IP particularly, three new laws were published late last year for trademarks, copyright, patents and industrial designs as shown below:

  • Federal Decree- Law No. 36/2021 on Trademarks
  • Federal Decree-Law No. 38/2021 on Copyrights and Neighbouring Rights
  • Federal Law No. (11) of 2021 regarding the Regulation and Protection of Industrial Property Rights

The above are just part of many other regulations that were enacted or amended in 2021 and 2022 to expand in IP rights protection and deal with unregulated areas in the past, such as unfair competition, cyberlaw etc.

The UAE Cabinet has also published implementing regulations to be read alongside each law which sets out procedural details of the laws and fills in the gaps where the law is silent or briefly regulated the same. 

Hot topics in intellectual property in the UAE include the Metaverse which has and will challenge the existing IP frameworks worldwide. The UAE aims to turn Dubai into a global hub for the metaverse and as such, the government has invested in its infrastructure. This will mean that brands must decide how they will utilise their brands on the metaverse and use the technology to reach a new consumer base. Other hot topics include the World Cup as the UAE established itself as an official fan hub and portal into Qatar and many fans chose to stay in Dubai as opposed to Qatar. This created many marketing and branding opportunities across the Middle East and as such, brands have invested in securing protection in the region. We expect this type of tourism to continue as Dubai continues to incentivize the market. 

Below we provide further details on the main three legal updates impacting IP in 2022. 

1. Cabinet Decision No. 57/2022 On Executive Regulations of the Federal Decree- Law No. 36/2021 on Trademarks

The implementing regulations for Federal Decree- Law No. 36/2021 on Trademarks were issued on 22 June 2022, supplementing and refining the procedural framework for trademark matters. The implementing regulations and the Trademark Law itself have updated and modernized the relevant provisions in the UAE. The UAE sets out to strengthen its position as a hub of innovation and as such, the IP laws were subsequently revised. The most notable change under the Law and implementing regulations is the accession to the Madrid System of WIPO which allows international applications from any of the member countries in up to 128 countries.

Other impactful changes include the move of cancellation actions to the authority of the Trademark Office instead of the local courts. Upon submitting a cancellation action, the trademark office will reach a decision within 90 days of filing. The availability and ease of filing cancellation actions had previously acted as an obstacle for concerned third parties and this change in process should shake up the system. The Law also removed any time limitation on cancellation actions against bad faith filings.

Other procedural changes include the removal of the need to publish new applications, renewals and assignments in two local newspapers. Now these actions only need to be published in the Official Gazette, stream lining the process of registration.

Multiclass Applications:
Article (2/3) of Cabinet Decision No. 57/2022 provides that a trademark application could be filed for one class or multiple classes and Article (2/5) of the said Cabinet Decision provides that several official fees will be imposed in relation to multiclass applications. However, the UAE Trademarks Office still do not adopt the multiclass filing system and the Ministry of Economy has not yet issued guidelines regarding the official fees to be charged in respect of multiclass applications.

Trade License for UAE Applicants:
Under Article (4) of the Cabinet Decision No. 57/2022 the requirement - to submit a trade license of UAE applicants (whether local person or entity to allow the registration of the trademark - was removed.

Appealing the decisions related to Opposition Actions:
Under the previous Trademarks Law and Implementing Regulation, the legal period for filing grievance before the Trademarks Committee against the decisions related to opposition actions was 15 days from the date of being notified with the same. However, this period has been extended under Article (7/7) of the Cabinet Decision No. 57/2022 to become 30 days.

Amendments of Trademark Application:
Under the previous Trademarks Law and Implementing Regulation, amendments were possible to be made regarding registered trademarks. However, under Article (8/3) of the Cabinet Decision No. 57/2022 amendment of trademark applications are possible as long as such applications have not been published in the Official Gazette.

Trademarks Renewal:
Article (11/1) of the Cabinet Decision No. 57/2022 extended the grace period for renewal of trademark registration to (6) six months after expiration. The renewal grace period under the previous Trademarks Law & Implementing Regulation was 3 months.

Temporary Protection of Trademark:
Articles (12) and (13) of the Cabinet Decision No. 57/2022 provide for the temporary protection of the trademarks used in Exhibitions and assists owners of temporary marks to register their marks and participate freely in temporary events and exhibitions. The foreign participants in official international exhibitions and officially recognized exhibitions inside the UAE have right to submit a request for temporary protection of their trademarks before the Temporary Protection Register during the exhibition period, at least one month before the opening of the exhibition. The Ministry of Economy will issues a certificate of temporary protection regarding the trademark used int eh Exhibition for the period of Exhibition.

Assignment of Pending Applications:
Trademark applicants can record assignment and transfer of trademark ownership regarding pending applications under the new Trademarks Law No. 36 of 2021. The Cabinet Decision No. 57/2022 outlined in Article (15) the conditions or details that shall be included in the Assignment deed in additions to the formalities that shall be completed for the assignment deeds to be acceptable by the Trademarks Office.

Attachment on Trademarks:
The Cabinet Decision No. 57/2022 in its Article (17) introduced the concept of “trademark attachment by court order” by providing that any attachment on registered trademark upon a court order shall be recorded in the register and such an attachment can not be removed unless a final and binding court judgment is issued to this effect.

Recordal of License Agreements:
Article (31) of the new Trademarks Law No. 36 of 2021 clearly states that lack of recordal is no longer a barrier against parties (licensor and licensee) to rely on such relationship against parties. The Cabinet Decision No. 57/2022 outlined the conditions and formalities related to license agreements in Article (18). Further, the said Cabinet Decision outlined in Article (19) the procedures for deregistration of a recorded license - whether by the trademark owner or the licensee – and how deregistration decision issued by the Trademarks Office should be objected before the Grievance Committee.

Geographical indications (GI):
The new Trademarks Law No. 36 of 2021 introduced this new intellectual property aspect and regulated GI in Articles from 38 to 44, while Cabinet Decision No. 57/2022 outlined in Article (23) the documents required for registration of GI in the UAE as well as the procedures related to the registration of GI and the rejections or oppositions related to GI applications

The implications for businesses
The trademark practices in the UAE are significantly more streamlined and in line with international practices, which therefore improves the ease of doing business in the UAE for brand owners.

Further developments in 2023
The Law and implementing regulations provide for multiclass applications and set out the procedural framework for such. However, in practice this is still not an option for trademark owners upon filing. Nevertheless, based on the provisions, we expect the UAE will become a multiclass filing system and we this change should occur within the next year.

2. Cabinet Decision No. 47/2022 On the Implementing Regulation of Federal Decree-Law No. 38/2021 on Copyrights and Neighbouring Rights

The implementing regulations for Federal Decree-Law No. 38/2021 came into force on 11 May 2022. These regulations further refine the copyright registration, importation and license procedures in the UAE. They also prescribe the requirements and procedures for the establishment of a Collective Management Organisation.  

What does this change?

The new Copyright Law and implementing regulations together make several substantial reforms to copyright practices in the UAE. This includes the implementation of the common law ‘work for hire’ doctrine whereby the copyright owner would now be the employer as opposed to the creator, by virtue of the relationship or contract. The old law did not recognise such a concept and any future works had to be assigned by way of an official assignment document. The ability to assign future works has also been amended from 5 works to a maximum of 10, as stipulated by the implementing regulations.

Other reforms include the establishment of the fair use doctrine in order to strike a balance between creator rights and reasonable and legitimate circumstances to produce works. Under the new law, exceptions arise when:

  • The reproduction is an incidental and integral part of the process of transmitting the 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.
  • The reproduction is made by a person licensed by the rightful party or by law to carry out the broadcast or transmission of the copyright protected work.
  • The reproduction takes place in the context of steps, that are incidental and inevitable to accomplish a lawful action and in a manner that ensures that the copy is automatically erased without being able to be retrieved.

The formation of collective management organisations has long been advocated for the UAE and was finally legalised under the new law. The implementing regulations set out the procedural framework for organisations including the requirements for a permit and the operational guidelines. The law and implementing regulations establishes a grievance committee for copyright claims which should improve the process by which copyright issues are managed and handled locally.

Smart Applications:
The New Copyright Law No. 37 of 2021 added a new copyright-protected work to paragraph (2) of Article (2) (namely, Smart Applications). The amended paragraph (2) of Article (2) will cover “Smart Applications, computer software and its applications, databases and similar works defined in a decision to be issued by the Minister of Economy”. The interpretation of Article (2/2) of the 2002 Law and its application in judicial practice has been widely discussed in disputes related to mobile and/or smart applications. Therefore, the new Copyright Law provides a response to the debates brought about by the technology development in addition that it provides a more precise distinction between compute programs and smart applications. It comes in line with the UAE government to lead the region and introduce a very innovative provision in its IP legislations and assert the country’s strategy to build a knowledge and technology-based economy. Eventually, the provisions of the Copyright Law - which are related to computer programs and the applications related to computer programs - are applicable on smart applications under the new law.

Assignment of Future Copyrights:
Under Article (15) of the new Copyright Law No. 38 of 2021 and Article (18/2) of Cabinet Decision No. 47/2022, a party can contract to assign up to ten future works. Any additional assignments in excess of this number are void.

Compulsory Licensing:
Cabinet Decision No. 47/2022 introduced provisions regarding compulsory licensing for reproduction or translation or both for a protected work. Article (7) of the Cabinet Decision provided that any interested party may apply to the Ministry of Economy to obtain such compulsory license for the purpose of fulfilling education needs of all kinds and levels in addition to public library’s needs. Articles (9) and (10) of the Cabinet Decision No. 47/2022 set out the conditions required for providing reproduction and translation compulsory licensing.

Assigning the benefit of a Copyright License:
Generally, the assignment of the benefit of copyright license is generally possible if the license expressly permits assignment, except for reproduction and translation compulsory licenses, which cannot be assigned to third parties according to Article (13) of Cabinet Decision No. 47/2022.

Customs Seizure:
Cabinet Decision No. 47/2022 in Article (17) provided that Customs Authorities in the UAE may on their own or upon a request from the right owner to suspend clearance of suspected shipments that contain materials that violate the Copyright Law for 20 days. The Article outlined the documents required to be submitted to the Customs Authorities in order to consider the suspension request.

Protecting Privacy of Photography and Audio/Visual Recordings Subjects:
Besides photographs, the new Copyright law grants protection to individuals who appear in audio or visual recordings. The New Law provides that a photograph or audio recording or visual recording featuring an individual may not be kept, exhibited or published or distributed without the consent of the individual appearing in the photograph or recording. There are exceptions to this general rule if the photograph or recording was made during public events or public activities that are made available to public in a public place or if the publication was authorized by the public authorities as a service for public interest. However, in each case, the exhibition or circulation of the photograph or recording must not prejudice the position of the person who is the subject of the photograph or recording.

The new Copyright law, also, entitled the individual appearing in the photograph or recording to publish, use and exploit the photograph or recording – without the consent or authorization of the photographer or the recorder of the audio or visual recording – subject to any agreement to the contrary. Therefore, regardless of the fact that the copyright in the photograph or audio recording or visual recording belongs to the photographer or the recorder by default, where an individual is captured in a photograph or recording, consent of the individual may have to be obtained for any use or exploitation of the work in order to comply with the Copyright Law as well as Data Protection Laws.

The implications on businesses
The changes, such as the work for hire doctrine, will come as a relief for many business owners as works created under employment contracts and/or agency contracts will automatically be considered to be owned by the business. This will save the cost, time and effort in creating individual assignment documents for future works with employees/ agents. 

The Default Ownership of Copyright in Architectural Designs

Architectural Designs have been addressed practically in the new Copyright law. Work for hire is being explicitly concluded from delivering such works. The new Copyright Law introduced new provisions that state that ownership of copyright in architectural designs vests in the owner of the building and not the original person who created the Architectural Design, subject to any agreement to the contrary. This is indeed a very important game changer to the industry which will set essential limitation on the architectural works, ability to reutilize their designs and/or enforce their rights against third parties. Furthermore, the new Copyright Law permitted the owner of the building to modify or alter or improve the building which is subject of the copyrighted architectural designs.

Exceptions to the Default Rule related to Ownership of the Copyright Work
Under the previous Copyright Law of 2002 Law, the default rule is that ownership of copyright in a work initially vests in the author who created the work, even if the works are commissioned by a client, and therefore, clients used to modify this position through signing contracts hereby the creator assign its economic rights in the copyright to clients. An exception to this rule is the “work made for hire” and this exception has been introduced in the new Copyright Law No. 37/2021 which provides that ownership of a work made for hire belongs to the party that hired the individual who created the work. There are two situations set out in Article 28 of the new Copyright Law, in which a work may be considered as having “made for hire”:

1. If the author created the work within the scope of his employment and if such a work was achieved using the employer’s resources. In such case the employer is the default owner of the copyright in the work, subject to any agreement to the contrary.
2. If the author created the work for the benefit of a third party, in such case the third party for whom the work was created is the first owner of the copyright in the work, subject to any agreement to the contrary.

Under the New Law, and subject to any agreement to the contrary, the employee will remain the default owner of the copyright in the work created during his employment if (1) the work is not related to the scope of his employment and not related to the business or activities of the employer and (2) the work is created or achieved without utilizing the employer’s documents, experiences and resources.

3. Cabinet Resolution No. 6/2022 regarding the Executive Regulations of Federal Law No. (11) of 2021 regarding the Regulation and Protection of Industrial Property Rights

The new law came into effect in November 2021 followed by the implementing regulations which were issued on 10 February 2022. The new law and implementing regulations update the legal framework that applies to patents and industrial designs, with changes to the preparation, prosecution and enforcement of patents and designs. 

What does this change?
The most significant changes include:

  • The introduction of accelerated examinations for patents
  • Possibility of converting a utility certificate into a patent is now permitted
  • The period of utility certificate is now 20 years (previously 10 years)
  • Change from absolute novelty to a novelty grace period
  • Layout designs of integrated circuits now available for protection

The implementing regulations set out the conditions for converting a utility certificate into a patent and set out the process of examination, the process of compulsory license requests and the process for registration of layout design for integrated circuits.

The new law has significantly increased the penalties associated with patent infringement and Article 69 of the new law prescribes that:

“Without prejudice to any severer penalty stipulated in any other law, he shall be punished by imprisonment and a fine of no less than AED 100,000 (one hundred thousand dirhams) and not more than AED 1,000,000 (One million dirhams)” or either of these two penalties for anyone who submits documents or provides incorrect or forged information to obtain a patent, a utility certificate, an industrial design, or a layout drawing of an integrated circuit, as well as anyone who imitates an invention or a manufacturing method, or willfully infringes any right protected by this Law."

The amendments are designed to enhance the UAE’s competitiveness in the field of industrial property rights by observing best international practices and standards.

Updated Requirements for filing Patent and Design Applications:
The key change on the practice of the International Center for Patent Registration (ICRP) at the Ministry of Economy - following the issuance of the new Industrial Property Law No. 11 of 2021 and Cabinet Decision No. 6 /2022 – is easing the filing and examination process through allowing the applicants to submit notarized copies of the required documents (namely, Power of Attorney, Assignment Deed from the inventors to applicant, an extract from the commercial register) while legalization of such documents up to the UAE Consulate is no longer required. Further, the supporting documents no longer need to be translated into Arabic unless requested by the International Center for Patent Registration. Therefore, the filing process is no more time consuming and costly.

Limitation of number of claims:
Patent applications must be limited to 50 claims while utility models must be limited to 10 claims. Further, the new law and implementing regulation allow for post-grant amendments if the scope of the claims remains with the allowed scope.

The implications for businesses
The changes will allow inventors and applicants to obtain protection for their intellectual property in the UAE with more ease and certainty of process. The accelerated examinations will improve the availability of protection. 

Expectations for 2023
There are no further developments expected to the law in 2023. However, the GCC patent office announced its wind up of operations in January 2021 and there are still some ambiguities about what will happen next. This could lead to further changes to laws and practices at a UAE level. 

Expectations for Intellectual Property regulations in 2023

The UAE is increasingly becoming an international player and will continue to develop and substantiate its legal framework to attract investment. Dubai recently launched the Dubai Metaverse Strategy which aims to turn Dubai into one of the worlds top metaverse economies which envisions the creation of 40,000 jobs. Developments in this area are likely to require new legislation and enhancements to keep up with the pace of technology. 

In respect of trademarks, there is the expectation that the move from handling cancellation actions under the local courts to the trademark office will increase the availability and likelihood of trademark cancellation actions. As soon as the logistics and availability of service becomes clearer and fully functional, we expect that brand owners will begin to challenge existing brands more frequently and it will be interesting to see how the trademark office responds and reaches its decisions. 

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