Intellectual Property Guide

United Arab Emirates

STA Law Firm

The information contained in this document is intended for information
and reference purposes only. The nature of the information in of this
articles is intended to provide accurate and authoritative information
in regard to the subject matter covered. The contents set out in this
article should not be construed as legal advice. If legal advice or other
expert assistance is required, the services of a competent professional
person should be sought.
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 Introduction
Vide Paris notification number
supervision of the Ministry of Information and Culture.
173 dated 19 June 1996 and
issued pursuant to the Paris
Patent protection in the United Arab Emirates lasts for 20
Convention for the Protection
years from the date of filing the original application. The
of Industrial Property, United
Industrial Property Office administers Patents and Designs
Arab Emirates (the “UAE”)
under the supervision of the Industrial Property Directorate,
became a member of the Paris
Ministry of Finance and Industry.
Union. UAE’s membership to
the Berne Convention (Literary
and Artistic Works) was officially
recognized on July14, 2004,
and to the Rome Convention
as of January 14, 2005. The
country is also a member and
signatory to TRIPS Agreement
since April 1996. UAE entered in
to membership of the Gulf
Cooperation Council as of
November, 1998.

The Intellectual property

legislation of the UAE includes
Patents and Industrial Design
Law number 44 of 1992,
Trademarks law number 37 as
of 1992, Copyright and
Neighboring Rights Law
number 40 of 1992. The
Industrial Property Office
administers Patents and Trademark Law & Registration
Designs under the supervision Generally speaking, the United Arab Emirates Federal Law
of the Industrial Property number 37 of 1992 (the “Law”) regulates the law on
Directorate, Ministry of Finance trademarks. The Law was subsequently amended by Law
and Industry. The Trademark number 19 of 2000 and Law 8 of 2002, providing protection
Section administers Trademarks for registered trademarks. The law includes the definition of
under the supervision of the trademarks, signs that cannot be registered as trademarks,
Ministry of Economy. registration and cancellation procedures, transfer of
Copyrights are administered by ownership and mortgage, licensing others to use
the Copyright Department trademarks, penalties for trademark law infringement &
under the general & transitory provisions.

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 The United Arab Emirates

The United Arab Emirates (the UAE) received independence in 1971

and has a federal law regime. The country comprises of seven
states, namely – Abu Dhabi, Dubai, Sharjah, Fujairah, Ajman, Ras
Al Khaimah and Um Al Qwain. The rulers of the UAE comprise the
Federal Supreme Council which is empowered to elect the country's
President, Vice President and other members for every five year
term.

With its unprecedented growth and persistent need for

infrastructure, UAE is increasingly attractive for foreign investors.
Until few years back, foreign entry into UAE was possible through
partnership with local nationals. These partnerships have been
subject to local laws and regulations. However, the UAE’s accessions
to the TRIPS, Berne and Rome Convention have created (and
continues to create) new opportunities for foreign multinationals.

Expatriate investors and corporations intending to establish their

presence in the UAE enjoy from a range of benefits. These include
availability of world-class infrastructure, zero tax rates, easy
availability of work-force and personnel, zero restrictions on transfer
of capital and profits and so on. This article explains the intellectual
property law of the UAE.

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 Intellectual Property Law in the UAE
Much ink has been spilled in describing the pervasive and rapid urbanization of the
Arabian Gulf in the late 20th century. Less attention has however been paid to the
legal and regulatory development in light of growth and diversification witnessed in
last two decades.

With its unprecedented growth and persistent need for infrastructure expansion, the
United Arab Emirates has and continues to become increasingly attractive to foreign
investors. UAE has also passed several jurisdictions in the GCC and, in that, foreign
corporates and expatriate entry into the UAE is possible by owning one hundred
percent shares in the name of foreign nationals in free zones such as the DIFC, Dubai
Media City, JLT, DuBiotech and many others.

UAE’s accession to WTO (10 April 1996) has created some positive effects on a
medium and long-term, and further deregulation is anticipated in the coming years.
For instance, for a foreign multinational active in the UAE, the future opportunities
that arise from the implementation of WTO reforms will be of high relevance, and it
is necessary to take this next development into account when strategies get formed.

The World Trade Organization is an influential player in the field of global governance.
Interestingly, the WTO is the only international organization that deals with global
rules of trade between member nations of the WTO. Since its creation in January
1995, it has expanded the reach of trade rules deep into the regulatory structure of
almost 159 sovereign states (as of March 2013), affecting the daily lives of all citizens.
The WTO is founded upon the organizational structure of the GATT and its secretariat
- to a greater extent; it formalizes and extends the structure that had gradually
evolved over 50 years.

UAE is a member of the Paris Union and has a comprehensive patent law that allows
one to select from a wide range of innovations listed in the law.

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 UAE’s membership to the Berne Convention (Literary and Artistic Works) officially got
recognized on July 14, 2004, and to the Rome Convention as of January 14, 2005.
UAE is a member and signatory to TRIPS Agreement since April 1996. UAE entered
into membership of the Gulf Cooperation Council as of November 1998.

The Intellectual property legislation of the UAE includes Patents and Industrial
Designs Law number 44 of 1992 (as amended), Trademarks law number 37 as of
1992, Copyright and Neighboring Rights Law number 40 of 1992. The Industrial
Property Office administers Patents and Designs under the supervision of the
Industrial Property Directorate, Ministry of Finance and Industry. The Trademark
Section serves Trademarks under the supervision of the Ministry of Economy.
Copyrights get administered by the Copyright Department under the direction of the
Ministry of Information and Culture.

1 UAE Patent Law

Federal Law Number 44 issued in 1992 and relating to the Industrial Regulation and
Protection of Patents, Industrial Drawings, and Designs was replaced by Federal Law
number 17 in 2002 and subsequently amended by the Federal law number 31 in the
year 2006 (the Law). According to the Law, the Ministry awards patents to any new
invention that results from an idea or step that is inventive in fact provided however
that such concept is of industrial use. The Patents Law of UAE provides that a patent
is valid for a term of twenty (20) years

The Patent law also sets out specific exceptions as to grant of patent rights such as:
a. Plants and plant varieties, animals or biological ways of producing plants and animals. An
exemption may apply for the microbiological methods and their byproducts;
b. methods for diagnosing humans and animals, special treatment and surgical operations;
c. mathematical and scientific principles, discoveries and methods;
d. manuals or guides, rules or processes followed to conduct business or perform mental
activities or play games; and
e. invention that may lead to a violation of public morale or peace.

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 Registration Procedure:
The applicant must file the following documents:
a. note setting out a clear and concise description of the invention, and the inventor;
b. technical specifications and drawings to support the reasons for the application;
c. the copy of company’s articles of association;
d. a brief note not exceeding two hundred words proving that the invention is inventive
and put to industrial use;
e. a duly legalized power of attorney in favor of the patent agent;
f. a consent letter from the founding inventor in cases where a patent application is an
extension of an earlier approved patent; and
g. attested copies of the patent certificate if the same has received approval from other
jurisdiction. Once approved, the award gets printed and published in the Industrial
Property Journal or the Gazette of the UAE.

Upon receipt of the application, the Ministry shall commence an examination of

the claim to ensure that the same complies with the provisions of the law and
that the idea or step is novel, inventive and of industrial use. The Law empowers
the UAE Patent Office authorities to reject any application that does not meet the
conditions set out in the Patents law. An appeal is allowed for rejections, but such
request must be made within a sixty days’ time frame. The accepted patent
applications get reported in the Official Gazette, and any member of the public
has the right to oppose before the UAE Patent Office challenging grant of such
patent. If no such opposition gets lodged within sixty days, the 'letters patent' or
the utility certificate is issued.

Commercial exploitation of a patent is a mandatory requirement imposed under

the Law. Article 24 of the Law (based on Article 31 of TRIPS Agreement) provides
that in the events where the patentee fails to exploit the patent or commercially;
fails to assign the same in favor of a third party, the patent will be subject to
compulsory licensing. Compulsory licensing means court or competent authority
to grant a patent license in cases where patent owners have failed to
commercially exploit or license the patent and where circumstances warrant that
license must be issued.

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 Trademark Law & Registration

2 Generally speaking, the United Arab Emirates

Federal Law number 37 of 1992 (the “Law”)
regulates the law on trademarks. The Law was

Trademarks subsequently amended by Law number 19 of

2000 and Law 8 of 2002, protects registered
trademarks. The legislation includes the definition
Vide Paris notification number 173 dated 19
of marks, signs that cannot get registered as
June 1996 and issued pursuant to the Paris
trademarks, registration and cancellation
Convention for the Protection of Industrial
procedures, transfer of ownership and mortgage,
Property, United Arab Emirates (the “UAE”)
licensing others to use trademarks, penalties for
became a member of the Paris Union.
trademark law infringement & general & transitory
UAE’s membership to the Berne
provisions.
Convention (Literary and Artistic Works)
was officially recognized on July14, 2004, The International Classification of Goods and
and to the Rome Convention as of January Services for Registration of Marks under the Nice
14, 2005. The country is also a member and Agreement (9th edition) in practice followed in
signatory to TRIPS Agreement since April the UAE and the revision of class 42 with the
1996. UAE entered in to membership of the creation of classes 43 to 45 has been adopted as
Gulf Cooperation Council as of November, of January 1, 2002.
1998.
The Intellectual property legislation of the Procedure: Once the applicant applies, the
UAE includes Patents and Industrial Design application gets queued to be examined as to
Law number 44 of 1992, Trademarks law the trademark registrability. Accepted
number 37 as of 1992, Copyright and applications by the Registrar get published in the
Neighboring Rights Law number 40 of 1992. Trademark Journal and two local Arabic
The Industrial Property Office administers newspapers. There is 30 days period for filing an
Patents and Designs under the supervision opposition by any interested party. The decision
of the Industrial Property Directorate, of the Registrar regarding such claim may be
Ministry of Finance and Industry. The appealed to the Committee in the Trademark
Trademark Section administers Trademarks Office, and the Committee's decision may be
under the supervision of the Ministry of appealed to the competent court. In the
Economy. Copyrights are administered by absence of an opposition, the published
the Copyright Department under the trademark gets registered, and the certificate of
supervision of the Ministry of Information registration awarded. Trademark registration
and Culture. process in the United Arab Emirates takes typically
4-5 months’ time.

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Trademark Registration Procedure:
REGISTRATION VALIDITY: 10 years, renewable for other consecutive periods, each of
which is ten years.

RENEWAL TIME: Application for Renewal should be submitted during the last year of
the protection period. There is three (3) months grace-period for late renewal upon
payment of lateness fine. (Renewal is to be published in the Trademark Journal and
in two local Arabic newspapers).

OPPOSITION OF TRADEMARKS: If someone issues petition opposing trademark is issued

by someone, the Ministry in such event, serves a show cause on the applicant
requiring the applicant to provide reasons as to why the application should be granted.

TRADEMARK IS NOT A TRADE-NAME: A company of firm’s name is its trade-name which is

often confused with the trademark. Trade-names are issued by the Economic
Department of Dubai whereas marks fall within the jurisdiction of Ministry of Economy.
Registration of trade-name does not create a mark.

3 Copyrights
UAE’s Copyright and Authorship Law number 7 issued in the year 2002 provides for
protection of copyrights. Similar to copyright laws of other countries, copyright rights
originate from the creation. The Copyright Law requires every author to submit their
works to the Intellectual Property Protection Department (IPPD) of the Ministry of
Information and Culture to avail protection granted under the law. The law confers
protection to authors of literary, artistic, and scientific works. Registration of copyright
is essential in cases where enforcement is required.

The copyright law covers protection of works such as sound, drawings, motion pictures
and works of art, computer software, translations of original work, etc. Licensing of
copyright is permitted, and parties should formalize their relationship through a
contract. There is no requirement for a copyright license to be registered.

Unauthorized publication of an author’s work constitutes a criminal offense and

penalizes the offender with a fine of minimum fifty thousand (50,000) UAE Dirhams.

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4 Industrial Designs
The United Arab Emirates Patent and Design Law (Federal Law number 44
of 1992) initally provided for registration of industrial designs. Since its inception in
1993, the Ministry of Economy's patent division accepted industrial design applications.
However, on account of lack of machinery and internal management, the ministry was
unable to issue any patent certificates or design rights until 2008. It was only
sometime in March 2008 the book entitled Volume I - the Ministry of Economy issued
industrial designs containing approximately 59 designs. With the constitution of the
new Intellectual Property Design Rights department within the Ministry, it is now
possible to register designs by way of three-dimensional trademarks to obtain the
broadest protection possible.

Industrial design rights in the United Arab Emirates get approved for the novel and
ornamental or aesthetic aspects of an article, such as the shape of an article, patterns,
lines or colors. Industrial designs relate to aesthetic features and not technical features.
Applicants desirous of obtaining Industrial Design rights should apply at the Design
Registry of the Ministry of Economy.

Understanding of the Term: Industrial Design

i. An industrial design is any composition of lines or color or any combination of
these features, which gives a unique appearance to and can serve as a pattern
for an industrial product or handicraft; and
ii. An industrial model is any original three-dimensional form, which gives a unique
appearance to and can serve as a pattern for an industrial product or handicraft.

Federal Law No. 17 of 2002 repealed the Patent Law No. 44 of 1992 to bring UAE
legislation into line with Trade Related Intellectual Property Rights (the TRIPS).
Since 1998, it has been possible to obtain patent protection in all Gulf Cooperation
Council (the GCC) member states through the filing of a single application at the
GCC Patent Office in Saudi Arabia. The Law expressly provides the legal framework
for the protection of the Designs in the UAE.

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Industrial Design under law 17 of 2002
i. Applicants can obtain the ‘industrial drawing’ and design certificate provided it
does not violate the public order or morals of the state.
ii. The term of protection is ten (10) years from the filing date.
iii. The owner of an industrial drawing and design certificate can prevent any other
party from undertaking the following activities:
iv. Use of the industrial drawing, design, or model for manufacturing any product;
v. Importation or acquisition of any merchandise relating to the drawing, design,
or model with the intention of using or selling that product.
vi. The Ministry of Economy reserves the right to call for such additional information
as it may deem fit in processing an application relating to registration of
industrial design and/or grant of industrial design certificate from the applicant.

Registration Procedure
- Filing an Application before the Patent Office to qualify for protection under the law.
- The design is examined and is subject to approval.
- Accepted application(s) then get published in the Official Gazette office, and the
absence of any objection is successfully registered.

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 Checklist: Registration of Industrial Design

Serial Particulars Remarks Document type

1 Copy of Applicant’s Trade license - Photocopy

2 Copy of Managing Director’s Passport - Photocopy
3 Copy of Managing Director’s Residence visa Evidence as to UAE Photocopy
residency
4 Power of attorney Issued in favor of original
patent agent
5 Copy of commercial registration certificate (if Evidencing prior Original and photocopies
any) issued by Department of Planning and registration or grant
Economy for Parent/Holding company of rights to parent
company
6 Letter from company with details of person(s) In cases where the Original (2 sets)
involved in carrying out design applicant is
company/employer
7 Copy of CD containing aesthetic features, Two sets of compact Company Disc (2 sets)
graphical designs, and internal as well as disks are generally
external layout of design required
8 Copy of registered trademark & trademark Where trademark 3 copies
certificate forms part of the
design
9 Technical specifications relating to designs In cases where 2 original sets plus letter
including three dimensional art-work Ministry of Economy from applicant
requests for same
10 Fees payable towards initial search AED 800/-
11 Registration fee payable to Ministry of To be advised
Economy

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 Potential IP risks in M&A Deals

5 Buyers in M&A transactions are at risk of

litigation liability resulting out of the acquisition.
A careful and extensive due diligence on past
debts, ‘cease and desist’ letters, infringement
IP Due Diligence in M&A notices, court orders and objections lodged
Transactions before Patent office must be carefully
reviewed and analyzed. Buyers must in such
In merger and acquisition deals, most often events, consider obtaining potential
companies and even their in-house indemnities from the seller in addition to signing
counsels presume that intellectual property other deeds or instruments such as waiver and
rights will by default get transferred with the release (including release from past acts of the
acquired assets. In some cases, parties also seller), and deed of adherence. Initial litigation
assume that intellectual property related posture in some jurisdictions can quickly get
issues can get resolved by a general evaluated although, in some countries such as
covenant on IP representations and UAE, the possibility of assessing a claim before
warranties. The fact, however, is that almost Dubai International Arbitration Centre, Dubai
every transaction involves some of the courts, and other authorities may not be
intellectual property assets that – if not readily possible. Buyers must also investigate
properly evaluated and examined can whether rights in the IP to be acquired are
lead to unpleasant consequences and subject to prior agreements that may prevent
damages with the possibility of a complete a buyer from using the same in its territory,
turnaround of the transaction or premature other markets, field, or business-related area.
termination of the deal.
UAE Federal Competition Law (the
In a typical M&A transaction, target Competition Law) number 4 of 2012 aims at
companies often overstate their IP or other prohibiting monopolization and any attempts
intellectual property assets. Likewise, the
to monopolize and further aims at liberalizing
target company may have already
foreclosed markets and opening up new
licensed whole or part of its intellectual
markets to competition. The new Competition
property to a third party. A buyer would like
Law seeks to prevent abuse of dominant
to know the exact valuation of target’s IP in
addition to limitations as to exclusivity of the position by prohibiting restrictive
patent. In the absence of any sound due arrangements. The Competition Law extends
diligence exercise, conducting a general to mergers and other forms of business
review and examination of copies of combination. Buyers will need to evaluate risks
registered and unregistered intellectual in this regards besides ensuring compliance
property may lead one of the parties to an with the provisions of Competition Law.
unwanted future surprise.

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This UAE Intellectual Property Pack is not intended to offer legal advice, and you should not act upon the matters referred
to within it without taking specific advice.

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