UAE update on trademark protection & online enforcement in Dubai
The UAE Trademark Department has issued a decision concerning the amending of trademark applications at the prosecution stage.
The UAE Trademark Department has issued an administrative decision to restrict the amending of trademark applications at the prosecution stage. In addition, the Dubai Economic Development Department has released a seasonal report to demonstrate their proactive approach to online enforcement, the removal of violating social media accounts and the advanced protection of trademark rights.
Trademark Prosecution Procedure in the UAE
The UAE Trademark Office has issued Administrative Circular No. 2 for 2018 “New Circular”. The decision notifies registered attorneys and agents that amendments to applications prior to examination are no longer permitted. Following the implementation of an online platform to submit trademark applications in the UAE, the trademark office is now moving towards becoming more structured in coping with examination work and the rejection of unjustified amendments on applications. This circular ensures practical enforcement of the “First to File” doctrine to determine the eligibility to register a trademark in the UAE by limiting the applicant’s ability to change or amend its applied mark details, including the image, list of designated goods/service etc. Therefore, applicants should expect provisional refusal in cases where they have filed applications with incorrect or inaccurate specifications even if such errors are spotted before the examination is conducted.
Whilst the Trademark Office New Circular restricts amendments on filed applications, it does allow for applicants to make changes in representation and to transfer responsibilities. The applicants will remain eligible to select a different trademark attorney and file for amendment to change the agent at any stage during the examination.
Intellectual Property and Trademark Enforcement Online in Dubai
Following the introduction of an online IP portal to receive and process complaints promptly, the Intellectual Property Division at Dubai Economic Development Department “DED” announced their takedown of 5,000 social media accounts that operated with the intention to sell, offer or merchandise counterfeit and/or IP infringing products within the UAE during the first 6 months of 2018. DED has been very active in fighting counterfeit trade in the UAE and has worked extensively with brand owners over the last few years to wipe clean the local markets. In the last 24 months, DED has focused its efforts on eliminating counterfeit trade operating via online platforms, such online marketplaces, social media, emails and URLs.
Moving forward, training department officials, recruiting skilled employees and adopting advanced technology is being considered and implemented by the IP division at DED. We can expect further efforts, partnerships and dialogue to be created with IP stakeholders and international organisations, such as INTA, IACC and the INTERPOL for the sake of anti-counterfeiting within the Emirate.
Commentary by Munir Suboh, partner and head of IP department, BSA Ahmad Bin Hezeem & Associates