This issue is filled with great insights and expert commentary on areas that are relevant to the legal landscape and highlight how the business community is embracing technology, media and telecommunications. There are various topics covered, from new ways of working and digital transformation in the finance sector to data protection regulatory updates and guidance. We also have a series of articles that focus on e-commerce across a number of jurisdictions.
You will also find insights from our lawyers around real estate analytics, tech trends, and data centres.
We hope this edition of Law Update provides some useful food for thought – enjoy the read!Take a read of the edition
With the modern world’s trend of adopting ‘e services’ in all forms of transactions, the Intellectual Property registries in the UAE are following suit. To this end, the UAE Trademark Office (TMO) has launched an online platform, which allows users to utilise IP services with ease and minimum time and effort. The various e-services now available with the TMO replace the previous procedures, which required submission of physical documents and applications and payment of fees in person. The TMO’s new practice will undoubtedly pave the way for a smoother and more efficient trademark registration process.
This article considers the progress the TMO has made in fully developing an electronic IP service system, as well as briefly considering the e-services available with other IP authorities in the UAE.
Having started the online filing system at the end of 2015, the UAE Trademark Office (TMO) gradually developed its e-services to cover all the registration process by the beginning of 2018. Indeed, most of the services relating to the prosecution of trademark applications are now accessible via the internet and available electronically with the TMO as further detailed below.
After filing the trademark application online, along with submitting all particulars of the application and the electronic remittance of the official filing fees, an applicant can now also arrange for the publication of the trademark online. The applicant can pay the official publication fees through the online portal and extract the publication form for their record. Following this payment, the TMO will publish the trademark in the UAE Trademark Journal. Upon expiry of the opposition period and in the absence of an opposition, the applicant can upload copies of the publications in the official gazette and local newspapers to the online portal. The applicant can then pay the registration fees and print out the ‘e registration certificate’ immediately.
The TMO’s online system also provides an automated blocking that prevents the processing of the payment and issuance of the e-certificate in the event of a third party opposition. If the published trademark application is opposed within the prescribed time period, the new system automatically halts the application upon the TMO’s processing of such opposition. Applicants will thus come to know of the opposition even though the TMO has yet to notify them of it officially. Thus, the online system for registration of trademark has simplified the publication and opposition process considerably.
The TMO also recently introduced an online system for trademark searches in the UAE. We anticipate that the TMO will next introduce its e-services to oppositions and counterstatements filings and appealing TMO decisions. As of April 2018, the TMO in the UAE launched the e-service for trademark searches to facilitate the conducting of official searches for availability of trademarks online. After remitting the official search fee online, the applicant can enter the search words both in English and in Arabic and the class(es) to be searched, and the search results will be available to print immediately.
The latest development with regards to TMO’s ‘e services’ is the Ministry of Economy’s circular dated 26 June, 2018 pertaining to the launch of electronic service for renewal of trademark registrations. As per the circular, ‘e service’ for trademark registration renewals and the electronic issuance of renewal certificates are now also available. Trademark registrants can file renewal applications, pay all fees and upload the publication forms for the renewals online. Once the publications are effected and copies uploaded onto the system, the renewal certificates will issue electronically.
For using Trademark Registry’s ‘e service’, you may visit the below website:
This article will now considers certain challenges which persist in the online search system. The current system provides a search service that may cover a single word, or a combination of more than one word, numbers or alphabets. However, as with the prior non-electronic old system, the new service has yet to cover logos. Moreover, if the search is for a word or combination of words, the search results will identify only the identical word or a combination of words identical to the searched word/ words. This means that the search system currently excludes from the results those trademarks that may be similar but do not contain word(s) identical to the word(s) searched. However, if the search is for some letters or a combination of letters and numbers that do not form a word, then the system will identify any trademark that contains any of the letters or numbers searched.
The search results’ limitation to identical word(s) is indeed a shortcoming of the new online system in the UAE. However, this shortcoming is resolvable to a certain extent by varying the word(s) searched. As such, the system allows for entering the search word in different forms namely, entering singular and plural forms of the word, entering the word with different spelling etc. in the same search.
Similarly, it has been quite some time since the Dubai Department of Economic Development (DED) has launched an e-filing system for filing of all complaints pertaining to trademark infringements and raid actions. The DED has also recently launched an online gateway for recording registered trademarks with the DED. The online portal supports DED in conducting routine checks for any counterfeiting / infringing products and informing the trademark owners/agents about the detected counterfeits / infringements. The brand owners can then file official complaints with the DED online system in order to take action against any infringing parties. Should you require further details on the DED’s IP Portal Gateway service please do not hesitate to contact the author of this article.
Similar to the TMO, the Patent and Copyright registries in the UAE has also introduced online filing systems for the registration of Patents, Industrial Designs and Copyrights for more than a year. For further details on these systems, please do not hesitate to contact our firm’s Patent and Designs team.