Tag: Trademarks

United Arab Emirates: Trademark Disputes

Posted on by info@www.utmps.com

This country-specific Q&A provides an overview of Trademark Disputes laws and regulations applicable in United Arab Emirates.

To represent a client before Court in respect of a potential trademark infringement matter, do you require a Power of Attorney – and if so, what are the execution formalities required by your courts?

A legalized POA, up to the UAE consulate from the client’s country would be required to represent a client before the Court in respect of a potential trademark infringement matter.

Upon receipt of the original legalized POA, we undertake the requisite formalities in the UAE, which include translating the document into Arabic and carrying out the required local legalization procedures.

Is it a requirement in your jurisdiction to send a cease and desist letter to a potential infringer before commencing proceedings for infringement? What are the consequences for a trademark owner who chooses not to send a pre-action letter?

In the United Arab Emirates (UAE), it is not a statutory requirement to issue a cease and desist letter to a potential infringer before initiating legal proceedings for trademark infringement. A trademark owner retains the right to proceed directly with litigation before the competent UAE courts without first engaging the alleged infringer through pre-action correspondence. However, despite the absence of a legal obligation, the practice of sending a cease and desist letter remains a widely adopted and recommended approach within the jurisdiction.

A formal pre-action notice serves several practical and strategic purposes. Primarily, it provides the infringer with an opportunity to voluntarily cease the infringing activity, thereby potentially resolving the dispute amicably and avoiding costly and time-consuming litigation. Furthermore, such a notice may prompt constructive dialogue between the parties, facilitating an early settlement. From a procedural standpoint, the cease and desist letter also acts as documented evidence that the trademark owner made reasonable efforts to settle the matter extrajudicially, which may be viewed favorably by the court as an indication of good faith conduct.

Additionally, serving a pre-action notice establishes clear and formal communication to the infringer, eliminating any claim of ignorance regarding the alleged infringement. This can strengthen the trademark owner’s position, particularly if the infringer continues its unlawful activities after being put on notice, thereby demonstrating willful infringement and potentially supporting a claim for enhanced damages.

There is another option available in UAE, which is to serve the Notice letter as bilingual through the Court Notary in UAE. It is usually an effective way and the adverse party takes it more seriously as the letter bears the stamp of the court and is taken as a preliminary action before actual litigation commences.

Conversely, choosing not to send a cease and desist letter before commencing proceedings carries no direct legal penalties or adverse procedural consequences under UAE trademark law. However, it may limit the trademark owner’s ability to establish pre-litigation evidence of the infringer’s knowledge and bad faith. Moreover, the absence of prior notice may, in certain cases, be perceived by the court as a missed opportunity for amicable resolution, particularly if the infringement could have been promptly remedied upon notification.

In your jurisdiction, is there a risk that a pre-action letter could give rise to claim against the trademark owner for unjustified threats? What steps should a trademark owner take to ensure any cease and desist letter does not expose the trademark owner to any liability.

In the United Arab Emirates (UAE), there is no specific statutory provision allowing an alleged infringer to bring a claim against a trademark owner for unjustified threats arising from a pre-action letter. However, such letter shall be based on the trademark owner rights, non-defamatory, and does not amount to unfair competition.

To mitigate any potential risk, the letter should clearly set out the basis of the trademark owner’s rights, provide objective details of the alleged infringement, and claims/demands which are reasonable to be requested for such infringement.

Is it mandatory for the parties to have attempted mediation or other alternative dispute resolution proceedings prior to commencing infringement proceedings?

In the United Arab Emirates (UAE), it is not mandatory for parties to attempt mediation or alternative dispute resolution (ADR) before initiating trademark infringement proceedings. Trademark owners may directly file a claim before the competent courts or relevant authorities without any pre-litigation ADR requirement.

However, in emirate as Dubai, the Dubai Courts issued Circular No. 9/2021 mandating that the submission of a technical report by an authorized expert to be filed when filing a statement of claim before the Court for any intellectual property claims, otherwise the filed claim will be not be accepted.

Therefore, an application before the “Centre for Amicable Settlement of Disputes” shall be filed before resorting to the Court to obtain an expert report in the matter, after attending the meetings and sessions scheduled by the center.

After obtaining the Expert Report, the substantive claim before the Court can be initiated. The time frame for rendering the first instance Judgment is approximately 6-8 months.

Are claims for trademark infringements heard before a general commercial Court or a specialist Court focused on Intellectual Property disputes? Are trademark infringement claims decided by a judge or by a jury?

There are no specialized Intellectual Property (IP) courts dedicated exclusively to trademark disputes, therefore, the trademark infringement claims are heard before the general civil and commercial courts.

The trademark infringement matters are decided by the Judge, as juries are not part of the UAE judicial system.

Is there a time limit for commencing trademark infringement proceedings once the facts giving rise to the infringement are known to the trademark owner. After how long would such a claim be time-barred?

There is no specific statutory limitation period exclusively governing trademark infringement claims.

However, Article 18 of the UAE Trademark Law (Federal Decree-Law No. 36 of 2021) provides that if a trademark has been registered and used continuously for at least five (5) years without any legal challenge, its ownership can no longer be disputed, unless bad faith in registration is proven.

In your jurisdiction does the law protect unregistered trademarks of any kind, including by way of unfair competition or protection of trade dress. What are the criteria for their subsistence?

The unregistered trademarks may be protected under unfair competition provisions if the mark has been used in the market and acquired fame or distinctiveness.Accordingly, the unfair competition principles can safeguard unregistered marks, trade dress, if the owner can demonstrate that the mark is well-known or has established a reputation in the UAE, and that the infringer’s actions cause confusion or unfairly exploit this reputation/causing damages.

In your jurisdiction will the Court hear claims for registered trademark infringement in parallel with claims for unfair competition, infringement of trade dress or other misleading advertising, or does a claimant need to bring such claims in a separate cause of action?

The claims for trademark infringement, unfair competition, trade dress infringement, and misleading advertising may be brought together in a single action, provided they arise from the same facts, allowing the court to consider them concurrently.

In your jurisdiction, do your Courts share jurisdiction with your Trade Mark Office, such that parties need to seek to seize the forum they prefer first in time, or does the Court take precedence and intervene to stay or transfer any live Registry proceedings (for example relating to invalidity or revocation of registered trade mark) which may overlap with an issued infringement claim and related counterclaim?

If a trademark matter is decided by the UAE Trademark Office, for example an opposition matter, the decision of the UAE Trademark Office is appealable before the trademark committee, which is further appealable to the Court of First Instance.

In the UAE, the actions such as infringement claims, non-use cancellation action, cancellation action by the owner of a well-known trademark against the trademark registered in bad faith, are filed before the Ministry of Economy of the UAE, by virtue of Article 24 of the UAE Trademark Law No. 36 of 2021. The first jurisdiction is held by this Federal Ministry. If a matter is decided by the Ministry, then the decision is appealable before the Court of First Instance, which is the higher Authority of appeal.

The Court will note intervene to stay or transfer any live Registry proceedings and/or Ministry proceedings, which may overlap with an issued infringement claim and related counterclaim. If such a situation arises, parties may submit a request to the Trademark Office and/or Ministry to suspend the decisions in the live matters before them, while informing them about the proceedings before the Court, which might ultimately affect the decisions in the proceedings before the Trademark Office and/or the Ministry. Please note that although the parties have the provision to submit the request, but the discretion to entertain the request, lies with the concerned officials.

Where the defendant has a counterclaim for invalidity or cancellation of the registered trademark being asserted against it (either on the basis of earlier rights or as a result of non-use by the trademark proprietor), does the counterclaim become part of the infringement action, so that both issues are heard by the same Court within a single action, with the Court making a determination at its conclusion, or are the validity issues bifurcated and heard in separate parallel proceedings? If in your jurisdiction validity issues are bifurcated, what are the practical consequences of this from a timing perspective? For example, does this mean that a Court will stay the infringement claim and proceed with the validity attack first to avoid finding a trademark infringed, only to have a separate Court find the trademark invalid at a later date?

In the UAE, the actions such as invalidity or cancellation of the registered trademark, non-use cancellation action, are filed before the Ministry of Economy of the UAE, by virtue of Article 24 of the UAE Trademark Law No. 36 of 2021, and not before the Court.

If such parallel proceedings connected to each other, do take place, the Court may, at its own discretion stay the Court proceedings, until the invalidation decision is issued by the Ministry. We need to bear in mind that the decision by the Ministry, is appealable before the Court.

When the matter reaches the Courts by way of appeals, the matters will be entertained by different Courts and will not be consolidated as one proceeding, although it may be interrelated. However, as per our experience in the UAE, the UAE courts may not choose to suspend and/or do not keep a matter suspended for too long, as they prefer to decide the cases as early as possible.

If the main objective in commencing infringement proceedings is to secure an injunction, is a claimant required to state how much their claim is worth at the point their claim is issued?

Although in practicality financial damages may not be possible to be ascertained, however the claimant will have to submit an estimation of the losses that he has faced due to the infringement of his trademark by the defendant. Based on the claim made by the claimant, the court fees are determined by the Court, before the proceedings begin. Hence the claimant is required to state the claim amount.

Is it possible to seek a preliminary injunction in your jurisdiction? If so, what is the criteria a trademark owner needs to establish and is there a bond or other undertaking in damages payable to compensate the defendant if the Court finds no infringement following a substantive hearing?

Yes, it is possible to request for a preliminary injunction before the UAE Courts.

The Trademark Law provides for the possibility for trademark owners to obtain an attachment order on an ex parte basis from a judge of urgent matters. An attachment order results in the seizure of the specific goods contained in the order. An attachment order can be a useful way for a litigant to gather evidence before filing a civil case.

A trademark registration certificate is a statutory prerequisite for obtaining such an order, unless the mark in question is famous. The party seeking the order also must pay an adequate financial security prior to the order being issued.

For a preliminary injunction, the petitioner must show the following three elements:

A prima facie right to enforce the trademark, by virtue of being owner of the trade-mark registration.

Apprehension of irreparable harm if injunction is not granted.

Balance of harm in favor of the petitioner.

The standard of proof is that of a high probability of harm to the petitioner, including to the value of the trademark, and the petitioner’s reputation associated with it.

When the Court will issue an injunction order for the seizure of the products, the Court may appoint an expert, who will evaluate the value of the seized products, after which the Court will instruct the claimant to deposit a financial security or a bank security deposit or an undertaking that he will pay the compensation to the defendant, in case the matter is decided in the favour of the other party, and his allegations are found incorrect.

Is a licensee (whether exclusive or non-exclusive) of a registered trademark entitled to commence proceedings for trademark infringement? Does the trademark proprietor need to be joined as a party to the proceedings, and does it have an effect whether the licensee is registered before the local Trademark Registry?

Yes. The licensee of a registered trademark is entitled to commence proceedings for trademark infringement. The trademark proprietor need not be joined as a party to the proceedings. However, it is mandatory that the license is recorded/registered before the UAE Trademark Office. An unrecorded licence does not have an effect against third parties and therefore, there is a tricky statutory limitation to enforce such rights against third parties.

Where the claim for trademark infringement is premised on similarity between the defendant’s mark and the trademark owner’s registered mark, does the proprietor need to demonstrate that confusion has occurred or simply that there is a risk of confusion? What is the minimum standard required to secure a finding of infringement?

Where the claim for trademark infringement is premised on similarity between the defendant’s mark and the trademark owner’s registered mark, it is not mandatory for the proprietor to demonstrate that confusion has occurred, even if he can sufficiently prove that the degree of confusion is of such that there is a risk of confusion among the consumers this would be a basis for the Court to decide on the infringement case.

The minimum standard required to secure a finding of infringement, is that the infringers mark when compared as a whole, is confusingly similar to the claimant’s mark, so much so that it is causing or it may cause confusion in the minds of the general consumers.

In your jurisdiction what type of disclosure or discovery is typically ordered by the Court in respect of trademark infringement actions from both parties?

In the UAE, there are no disclosure or discovery requirements or obligations as understood. Attorneys for the parties can use the court to request information from each other, but are under no obligation, to do so.

Since the UAE does not have a full system of discovery, a party to litigation is under no obligation to disclose evidence to the court, particularly if submitting such evidence is adverse to its position in the litigation. The parties are free to disclose only the documentation of information that helps their case

However, the Court may appoint an expert, who may hold hearings to review and examine the dispute, obtain further findings and documents from both the parties, and conduct his or her own investigations and prepare an expert report, which will enable the expert to provide its opinion to the Court.

Although the expert report may suggest/guide the Court in taking the decision, but the Expert’s opinion is only suggestive and not binding to the Court. The Court may decide the matter at its own discretion.

Both parties can also make submissions that support or challenge the expert’s opinion by way of submitting memorandums at the appointed court hearings.

What type of expert evidence is permitted by the Court in your jurisdiction? Does the Court accept consumer surveys and are there specific rules about how consumer surveys are conducted. Do the parties need to request prior permission from the Court to adduce survey evidence?

The Court requires the evidence adducing the claims of both the parties. This depends on the basis of the litigation. If the claimant is claiming that its trademark is famous in the Middle East, then the right holder will usually rely on trademark certificates from the GCC countries and other Arab-speaking nations will usually be beneficial to the case, apart from a home registration. These certificates should be original, certified copies (with translations prepared by a licensed UAE translator if they are not in Arabic).

Evidence of prior use is another important type of evidence that is considered by the Courts in the UAE, while reviewing the rights of different parties. These may be in the forms on invoices, bills of lading, letters of credit and the documents relating to the sale of the goods or services that are provided under the mark in the United Arab Emirates; Printed promotional material exhibiting the mark such as catalogues, brochures, pamphlets, stickers, posters, etc., distributed worldwide and/or in United Arab Emirates; Samples of advertisements in magazines, periodicals, journals having international circulation showing the mark;

Unlike in the other regions like Europe, where consumer surveys play a major role in submitting the evidence of the fame of the trademark and/or degree of knowledge of the trademark among the general public, the Courts in the UAE do not heavily depend on such surveys. It is not very common that parties submit such survey evidence in the UAE. Although the parties wish, they may conduct and submit such surveys as part of its evidence, such surveys will play the same role, as the other evidence would play. There are no specific rules about how consumer surveys are conducted in the UAE. The parties need not request prior permission from the Court to adduce survey evidence.

Does evidence submitted by your client in trademark infringement proceedings have to accompanied with a statement of truth or other similar declaration?

The evidence submitted before the UAE Court in trademark infringement proceedings do not have to be accompanied with any statement of truth or other similar declaration. This is not a practice in the UAE.

In your jurisdiction is it possible for a claimant to seek summary judgment of an infringement claim? What are the legal criteria for a Court to grant summary judgment?

Summary judgment is available in the DIFC Courts and the ADGM Courts, as the Dubai International Financial Centre (DIFC) courts in Dubai and the Abu Dhabi Global Market (ADGM) in Abu Dhabi have common law jurisdictions.

Moreover, Article 47 of the Federal Decree-Law no. (36) of 2021 Issued on 20/09/2021 ON TRADEMARKS – Provisional measures upon infringement of rights, states:

1- The right holder may, in case of infringement or in order to avoid an imminent infringement of any of the rights established under the provisions of this Decree-Law, obtain an order on a petition from the Magistrate of Summary Justice at the Civil Court with jurisdiction over the origin of the dispute, so as to take one or more appropriate provisional measures, including the following:

a- Making a detailed description of the infringement, the goods that are the subject-matter of this infringement, and the materials, tools and equipment used or that may be used therein.

b- Imposing seizure on the materials, tools and equipment referred to in the preceding paragraph of this clause, and the proceeds resulting from the infringement.

c- Preventing the goods that are the subject matter of the infringement from entering commercial channels and preventing their export, including imported goods forthwith after their customs clearance.

d- Preserving any evidence related to the subject matter of the infringement.

2- The Magistrate of Summary Justice may instruct the petitioner to submit whatever evidence in his possession suggesting that the right has been infringed or that the infringement is imminent, and to provide information that is sufficient to implement the provisional measure and identify the goods concerned.

3- The Magistrate of Summary Justice shall decide on the petition within a period not exceeding (10) ten days from the date of its filing, save for exceptional cases that he deems appropriate.

4- The Magistrate of Summary Justice may, when necessary, issue the order, at the request of the petitioner, without summoning the other party, if it is likely that the delay in issuing the order may cause irreparable harm to the plaintiff or if there is a fear that the evidence will be lost or destroyed. In this case, the other party shall be notified of the matter without any delay forthwith upon its issuance, and when necessary, the notification may be made immediately after execution of the order.

5- If the Magistrate of Summary Justice orders that a provisional measure be taken without summoning the other party, the defendant may, after being notified thereof, file a grievance against said order before the president of the court that issued it, within (15) fifteen days from the date of his notification thereof, and the president of the court in this case may confirm or modify or cancel the order. www.lexismiddleeast.com

6- The Magistrate of Summary Justice may instruct the petitioner to provide an appropriate financial guarantee or a bank guarantee sufficient to protect the defendant from abuse of the right, and the amount of the guarantee or bank guarantee shall be reasonable and appropriate.

7- The right holder may file a lawsuit in respect of the origin of the dispute within (20) twenty days from the date of the issuance of the order to take the provisional measure or from the date of his notification of the rejection of the grievance stipulated in clause (5) of this article, as the case may be, otherwise this order shall be cancelled at the request of the defendant.

Article 48- Claim for compensation

The Trademark owner incurring damage resulting from the infringement of any of his rights stipulated under the provisions of this Decree-Law, may file a lawsuit with the Civil Court to claim compensation in accordance with the general rules.

How long does it typically take to reach judgment in a trademark infringement action from issue of the claim, through to first instance decision? What is the lower and upper range of legal costs for such an action?

Typically, the First-instance proceedings take 5 to 10 months to reach judgment in a trademark infringement action from the issue of the claim but can be longer, if the expert delays submitting their report or if the parties seek to appoint another expert.

the lower and upper range of legal costs for such an action including attorney fees will be around 20000$ to 40000$, depending on the complication of the case.

Following a first instance decision, is it possible for either party to appeal the decision? What are the grounds upon which an appeal can be lodged? Is it necessary to request permission to appeal, or are appeals automatically permissible? If either party file an appeal, is the enforcement of the first instance decision stayed pending the outcome of the appeal?

Yes, either party can appeal the Judgment of the Court of First Instance before the Court of Appeals within thirty [30] days, and Proceedings at the Court of Appeal will take 3 to 6 months.

The primary grounds for appealing a trademark infringement or cancellation decision generally revolve around errors in law or fact. This means an appellant can argue that the court misapplied the relevant trademark laws, misinterpreted the evidence presented, or failed to consider crucial legal precedents. For instance, an appeal might be filed if the court incorrectly determined the similarity of two marks, failed to assess the likelihood of consumer confusion, or disregarded evidence supporting prior use. Further grounds may include procedural irregularities during the initial trial, such as a lack of proper notice to a party, the denial of a fair hearing, or the improper admission of evidence. Additionally, an appeal can address new evidence that was not available or reasonably discoverable during the original trial, but which could significantly impact the outcome.

appeals automatically permissible, it is not necessary to request permission to appeal, as per article 161 of Federal Decree-Law No. (42) of 2022 Promulgating the Civil Procedure Code.

If either party files an appeal, the enforcement of the first instance decision stays pending until the outcome of the appeal, as enforcement is only for the final judgments.

If the parties have been involved in a dispute before the local Trademark Office, what relevance does this have on later infringement proceedings? For example where trademark owner (A) may have already sought to oppose the registration of a third party (B’s) mark in proceedings before the local Trade Mark Office, is the trademark owner estopped from seeking invalidity of a registered trade mark where its opposition failed where the invalidity action is based on the same grounds as the unsuccessful opposition?

Yes, in such circumstances, the trademark owner will be estopped from seeking invalidity of a registered trademark where its opposition failed and where the invalidity action is based on the same grounds as the unsuccessful opposition.

In your jurisdiction, does the Court consider both liability and quantum within the same proceeding, or will any damages be assessed after the Court has reached a decision on liability? How are damages for trademark infringement proceedings typically assessed in your jurisdiction?

The UAE courts assess damages for trademark infringement based on the actual harm suffered by the trademark owner, which is typically evaluated using the following factors:

Loss of Profits:

The court may examine financial statements, sales records, and market impact to estimate the trademark owner’s lost revenue due to the infringement.

Unjust Enrichment of the Infringer:

If the infringer has profited from the unauthorized use of the trademark, the court may order compensation equivalent to the profits earned.

Market Reputation & Goodwill Damage:

The court may consider the negative impact on the brand’s reputation and goodwill.

Expert Reports:

The court often appoints a trademark or financial expert to assess the damage suffered by the claimant.

In addition to an injunction and damages, what other remedies are available in your jurisdiction?

The other remedies are available in the UAE, include:

Statutory Damages & Punitive Measures:

The UAE federal law no. (36) of 2021 concerning trademarks provides for fines and potential criminal penalties, which may be imposed alongside or instead of civil compensation.

Article 49 of the trademark law states:

Without prejudice to any severe penalty stipulated in any other law, a penalty of imprisonment and a fine of no less than (100,000) one hundred thousand dirhams and not more than (1,000,000) one million dirhams, or either of these two penalties, shall be imposed on whomever:

Forges a Trademark that was registered in accordance with the provisions of this Decree-Law or counterfeits a Trademark in a way that leads to confusing the public, whether in respect of the goods or services distinguished by the original Trademark or those that are similar thereto.

Knowingly uses a forged or counterfeit Trademark for commercial purposes.

Puts on his goods or uses in respect of the services he provides, in bad faith, a Trademark owned by others.

Possesses tools or materials with the intent of using them to forge or counterfeit registered or well-known Trademarks.

Knowingly imports or exports goods bearing a forged or counterfeit Trademark.

Article 50

Without prejudice to any more severe penalty stipulated in any other law, a penalty of imprisonment not exceeding one year and a fine of not less than (50,000) fifty thousand dirhams and not more than (200,000) two hundred thousand dirhams or either of these two penalties shall be imposed on whomever:

Sells or offers for sale or circulation or possesses with the intention of selling goods or offers the provision of services carrying a forged, imitated, or unlawfully put or used Trademark, despite his knowledge thereof.

Unlawfully uses an unregistered Trademark in the cases stipulated in Article (3) of this Decree-Law on his commercial papers and documents, goods, or services, and this would lead to the belief that the Trademark has been registered.

Article 51

In the event of recidivism, whoever commits any of the acts stipulated in Articles (49) and (50) of this Decree-Law shall be punished with a penalty that does not exceed twice the maximum penalty prescribed for the crime.

The court may order the closure of the facility, and order the confiscation of the tools, machines, and materials used in the offense.

Article 52

The court may publish the judgment of conviction at the expense of the convict.

Following a decision on the merits, is the winner entitled to recover all or a portion of its legal costs incurred in bringing or defending the proceedings. If legal costs are recoverable, what is the procedure involved and how does the Court assess the level of legal costs which should be reimbursed by the losing party.

The legal costs are generally recoverable, but only to a limited extent.

The winning party In the UAE litigation is entitled to recover a portion of its legal costs, but not necessarily the full amount, and the court fees, expert fees, and administrative costs may be awarded, but lawyer fees are awarded at the discretion of the court and are often minimal.

Legal fees for lawyers are capped and typically range between 816 US $ to 5445 US $, regardless of the actual expenses incurred.

Once the Court has issued a judgment, how long typically does the losing party have to comply with the Court’s judgment including any final injunction issued? What are the consequences for failing to comply and how would the winning party seek enforcement of its judgement.

Once a court issues a judgment in the UAE, the losing party is generally expected to comply with its terms, including any final injunctions, within a reasonable timeframe. While there is not a single, universally mandated deadline applicable to all cases, the execution process is typically initiated immediately following the judgment’s issuance. The specific time allowed for voluntary compliance can vary depending on the nature of the judgment and the court’s directives. For monetary judgments, a grace period might be implied to allow the losing party to arrange payment, but this is usually not explicitly stated. For injunctive relief, compliance is generally expected to be more immediate. The core principle is that the judgment is binding and must be obeyed without undue delay.

Failure to comply with a court judgment in the UAE carries significant consequences. Initially, the winning party can seek enforcement through the execution court. This process begins by submitting an execution application, often after a prescribed period has elapsed allowing for voluntary compliance. The execution court has broad powers, including attachment of assets, issuing travel bans, and even imprisonment for non-compliance with monetary judgments. Specifically concerning injunctions, failure to comply can incur penalties, including fines for ongoing breaches and potential contempt of court proceedings. The winning party, to enforce its judgment, will need to actively pursue the execution via the execution court, presenting the judgment and relevant documentation. This process could involve engaging with the court’s execution officers and potentially leveraging different legal enforcement tools available according to the law.










A Legal Perspective on Perfume Fragrances and Registration in GCC Countries: Can Scents Be Trademarked?

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The Unique Allure of Scents

The unique and captivating allure of scents has long been a cornerstone of the perfume industry. Beyond their aesthetic and sensory appeal, scents raise intriguing questions within the legal framework of intellectual property: Can a scent, particularly the fragrance of a perfume, be trademarked? And if so, what is the position of the Gulf Cooperation Council (GCC) countries regarding the registration of scents as trademarks?

The Concept of Non-Traditional Trademarks

Traditionally, trademarks have been associated with visual signs such as logos, words, or symbols that distinguish goods or services. However, as markets evolve, so does the scope of trademarks. Non-traditional trademarks, including sounds, colors, and even scents, have emerged as significant tools for brand differentiation.

The trademarking of scents hinges on their ability to function as a unique identifier of the source of goods or services. To qualify for trademark protection, a scent must satisfy the fundamental criteria of distinctiveness, non-functionality, and graphical representation—requirements that vary across jurisdictions.

Global Jurisprudence on Scent Trademarks

Globally, the recognition of scents as trademarks remains a complex issue. Jurisdictions such as the United States and the European Union have seen cases where scents have been successfully trademarked, albeit under stringent conditions. For example, a floral fragrance used in sewing thread was granted trademark protection in the United States, as it was demonstrated to be distinctive and not essential to the product’s function.

However, these cases are rare and often accompanied by rigorous evidentiary requirements. The challenges stem from the difficulty in demonstrating distinctiveness and providing a precise graphical or written representation of the scent, which is a core requirement under many trademark laws.

Scent Trademarks in the GCC Region

In the GCC countries, trademark laws are largely influenced by the unified GCC Trademark Law, which governs trademark registration across member states, including Saudi Arabia, the UAE, Qatar, Oman, Bahrain, and Kuwait. While the law provides for the protection of trademarks that are capable of distinguishing goods or services, its provisions primarily address traditional trademarks such as names, logos, and symbols.

The registration of non-traditional trademarks, including scents, is not explicitly addressed in the GCC Trademark Law. This absence leaves room for interpretation and potential developments. However, practical challenges remain. For a scent to be registered, it must be represented in a manner that is comprehensible and acceptable to the trademark office. The lack of clear guidelines or mechanisms for the graphical representation of scents in the GCC countries poses a significant barrier to registration.

Practical and Legal Implications

From a practical standpoint, businesses seeking to trademark a scent in the GCC region face hurdles in proving distinctiveness and in complying with representation requirements. The distinctiveness of a scent must be demonstrated through evidence that consumers associate the fragrance with the specific goods or services. Additionally, the scent must not result from the functional nature of the product—for instance, the inherent fragrance of a cleaning product would not qualify.


Legally, the absence of precedents and explicit provisions on scent trademarks in the GCC creates uncertainty. While this could discourage applications, it also presents an opportunity for businesses and legal practitioners to shape jurisprudence in this area. Successful registration of a scent trademark in the GCC would likely require innovative legal arguments and robust evidence to satisfy the criteria of distinctiveness and representation.

The Future of Scent Trademarks in the GCC

As global markets increasingly embrace non-traditional trademarks, there is potential for the GCC countries to expand their trademark frameworks to accommodate scents and other unique identifiers. Such developments would require amendments to the GCC Trademark Law and the establishment of clear guidelines for the registration of non-traditional trademarks.

For businesses in the perfume and fragrance industry, the ability to trademark scents in the GCC could offer significant competitive advantages, allowing them to secure exclusive rights to unique fragrances and enhance brand recognition. However, navigating the current legal landscape requires careful planning, expert legal advice, and a proactive approach to intellectual property strategy.

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Conclusion

While the concept of scent trademarks presents exciting possibilities, their registration in the GCC remains a challenging and largely uncharted area. Legal practitioners and businesses must engage with both the existing legal frameworks and the evolving trends in intellectual property law to unlock the potential of scent trademarks. By doing so, they can not only protect their innovations but also contribute to the development of a more inclusive and dynamic trademark system in the GCC region.

The Role of Intellectual Property Laws in Protecting the Fashion Industry in GCC Countries

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The Growth of Fashion in the GCC

The fashion industry is a dynamic and ever-evolving sector that reflects creativity, innovation, and cultural identity. Globally, it is valued at over $2 trillion, and the Gulf Cooperation Council (GCC) countries—comprising Saudi Arabia, the United Arab Emirates, Qatar, Kuwait, Oman, and Bahrain—have emerged as a significant hub for luxury fashion, ready-to-wear apparel, and bespoke designs. Fueled by economic prosperity, strategic investments, and cultural diversification, the GCC region is witnessing unprecedented growth in the fashion industry. However, with such progress comes the critical responsibility to safeguard the industry’s lifeline: intellectual property (IP) rights.

The IP laws governing fashion are not merely legal instruments but essential tools for fostering innovation, protecting creative endeavors, and securing the economic interests of designers, fashion houses, and investors. In a region as ambitious and globally integrated as the GCC, the enforcement of IP laws becomes pivotal to maintaining the integrity of the fashion ecosystem.

The Foundations of Intellectual Property in Fashion

Fashion, unlike many other industries, relies heavily on intangible assets. The creative vision embedded in a designer’s sketches, the innovation behind fabric technologies, or the brand value associated with logos and names is what drives commercial success. These elements fall under various branches of intellectual property, including trademarks, copyrights, industrial designs, and trade secrets. Each of these legal tools plays a distinct yet complementary role in ensuring that the rights of creators and businesses are adequately protected.

For instance, a luxury fashion house like Chanel or Dior depends on its trademarks to protect its iconic logos and brand identity. Meanwhile, industrial design laws secure exclusive rights over visually aesthetic creations, such as handbags, footwear, and couture pieces. In essence, IP law becomes a safeguard against counterfeiting, piracy, and unauthorized use, all of which are major concerns in the GCC region’s fast-expanding markets.

The Legal Landscape of IP Laws in GCC Countries

GCC member states have made notable strides in developing robust intellectual property frameworks. These efforts align with international agreements such as the TRIPS Agreement (Trade-Related Aspects of Intellectual Property Rights) and the Berne Convention for the protection of literary and artistic works. While each GCC country maintains its own legislative nuances, there is increasing regional cooperation to harmonize IP protections.

Trademarks in the Fashion Industry

A trademark distinguishes the products of one brand from those of another. In the GCC, trademarks are regulated under the unified GCC Trademarks Law, which provides consistent standards across member states. Fashion brands benefit significantly from trademark registrations, which allow them to protect their logos, brand names, and symbols.

In the UAE, for example, a trademark registration ensures protection for 10 years, renewable indefinitely. Luxury hubs like Dubai have seen substantial growth in fashion retail, but they have also become targets for counterfeit goods. Authorities have implemented strict measures to combat trademark infringements, such as seizures of fake products and substantial penalties for violators.

In Saudi Arabia, similar emphasis has been placed on cracking down on counterfeits, particularly within its booming luxury sector. Local designers and international brands are encouraged to actively register trademarks to secure their brand value in this rapidly expanding market.

Copyright Laws Protecting Fashion Designs

Copyright law grants protection to original works of authorship, including fashion sketches, patterns, and designs. Under the Berne Convention—ratified by GCC states—copyright protection arises automatically upon the creation of an original work. However, challenges persist regarding enforcement, as fashion designs often blur the line between art and functional utility.

In jurisdictions like the UAE and Qatar, designers are encouraged to document and register their creations to strengthen their ability to enforce copyrights against infringers. For emerging designers, particularly those in culturally inspired fashion, copyright laws can serve as a crucial safeguard for unique creations.

Industrial Designs and the Visual Appeal of Fashion

Industrial design laws protect the aesthetic, non-functional elements of fashion products. These laws are particularly relevant for items like handbags, shoes, accessories, and bespoke garments. GCC countries allow for industrial design registration, typically granting protection for up to 10 years, provided the design is novel and unique.

International brands operating in the GCC—such as Louis Vuitton, Gucci, and Burberry—actively pursue industrial design protection to prevent knockoffs. Simultaneously, local designers are increasingly leveraging design rights to secure exclusivity and market differentiation.

Trade Secrets and Innovation in Fashion

Trade secrets offer another layer of protection for proprietary information, such as unique manufacturing processes, fabric formulas, and business strategies. In a competitive market like the GCC, where innovation drives success, trade secrets help fashion businesses maintain their competitive edge.

Challenges Facing IP Enforcement in the GCC Fashion Market

While the GCC has made commendable progress in IP legislation, certain challenges persist:

  • Counterfeit Markets: Despite rigorous anti-counterfeit measures, fake goods continue to infiltrate markets, particularly in e-commerce and informal retail channels. Counterfeit luxury products, such as handbags, watches, and shoes, pose significant risks to brand equity and consumer trust.
  • Lack of Awareness: Many local designers and small businesses are unaware of their IP rights or the steps needed to enforce them. As a result, creative works remain unprotected, leaving them vulnerable to exploitation.
  • Enforcement Mechanisms: The enforcement of IP laws, while improving, can still be complex, time-consuming, and costly for businesses. Cross-border infringements further complicate matters, necessitating greater regional cooperation.
  • Cultural Challenges: In certain GCC markets, there is a need to balance modern IP frameworks with traditional cultural values and practices. This tension, however, also presents opportunities for innovation rooted in cultural heritage.

Opportunities for Growth and Protection

To fully realize the potential of the GCC fashion industry, stakeholders must adopt proactive approaches to IP protection. Key strategies include:

  • Registration of IP Rights: Designers and businesses must prioritize registering trademarks, copyrights, and industrial designs across GCC markets to ensure comprehensive protection.
  • Collaborating with Authorities: Working with customs agencies and local authorities to combat counterfeit markets through seizures and penalties.
  • Leveraging Technology: Technologies like blockchain can be used to authenticate fashion products and prevent counterfeiting, while AI-driven tools can monitor online platforms for IP violations.
  • Educating Stakeholders: Awareness campaigns, workshops, and seminars can empower local designers, businesses, and consumers to respect and enforce IP rights.

Conclusion

The fashion industry in the GCC is experiencing an unprecedented renaissance, shaped by cultural evolution, technological innovation, and economic growth. As the region solidifies its position as a global hub for luxury fashion and creative excellence, intellectual property laws must remain at the forefront of this transformation.

IP protection is not merely a legal formality but a foundation upon which the fashion industry can thrive. By safeguarding creativity, innovation, and brand equity, the GCC can foster a sustainable, competitive, and globally recognized fashion ecosystem.

For IP professionals, policymakers, and stakeholders, the path ahead is clear: robust enforcement, proactive protection, and continuous education will pave the way for a brighter, more innovative future in the fashion industry. In the GCC, where heritage meets modernity, intellectual property is the bridge that ensures creativity is rewarded, businesses flourish, and the industry thrives for generations to come.

Sri Lanka and Madrid Ratification: On the Way to International Branding Protection

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Ratification

During the process of establishing a consolidated Intellectual Property (IP) Policy, Sri Lanka has managed to improve its own Intellectual Property ecosystem, working on many advancements in this matter. The objective is to improve the enforcement of existing IP rights, along with promoting innovation and economic growth.

Considered as an emerging country that detains a growing role in technology and economic markets on a regional and international level, the Sri Lankan government endeavors to promote Sri Lanka as a commercial hub in Asia. 

In this context, trademarks can play a deciding role, knowing that Sri Lanka is interested in the promotion of a trademark environment for both the internal and external market.

Sri Lanka has committed to join the Madrid Protocol, aiming to develop and enhance the profit of International Business and Exportation activities. Hence, this implicates protecting the branding of each element of the commercial activity through registering trademarks to benefit from protection against any violation of the trademark.

To increase financial gain through export activities and international trading, exporters will have to register their trademarks on a national as well as international scale. Nevertheless, registering in different countries separately can be costly and time-consuming. Therefore, the Sri Lankan government decided to accede to the Madrid Protocol.

Accession to the Madrid System depends on the government’s roadmap, the legal landscape, and the ascending needs of the market. On February 23, 2020, the Sri Lankan government decided to accede to the Madrid Protocol, with NIPO putting its last notes for the final ratification.

The Sri Lankan government passed its Intellectual Property Rights Act in 2003, the Act encompasses protection for Copyright, Patent and trademark.

The National Intellectual Property Office of Sri Lanka established under the Intellectual Property Act No. 36 of 2003.

The Madrid Protocol, or the Madrid System, is an international convention in the field of branding, especially for the international registration of marks. It is considered the only global registration system for trademarks. Trademarks being internationally registered obtain protection internationally; the trademark holders are allowed to register a trademark in several countries simultaneously with only one application, one language, and denominated in one currency.

By registering a trademark according to the Madrid Protocol, the holder of the registration obtains international protection and related exclusive rights over the use of that trademark in connection with the goods or services for which it is registered in the designated territory or region.

The Madrid Protocol, or as it is described, the International Trademark Registration Treaty, confers several benefits: it protects a mark in a large number of countries by obtaining an international registration that affects each of the contracting parties. The Madrid System is a one-stop and cost-effective way to protect trademarks in multiple markets and about 130 jurisdictions.

By protecting commercial interests abroad, the system leads to a successful global business strategy, offering simultaneous protection in the territories of its members with advantages in time and costs through:

  • Filing one international application instead of multiple national applications
  • Filing in one language
  • Paying one set of fees in one currency
  • Obtaining an international registration covering multiple territories

In the process of filing an international trademark application through WIPO’s Madrid System, a mark may be the subject of an international application only if it has already been registered with the trademark office of the Contracting Party with which the applicant has the necessary connections.

However, many IP challenges can take place in the era of globalization of markets.

The overall IP ecosystem in Sri Lanka has improved in recent years in developing IP rights protection, but the lack of an effective strategic policy, and coordination among entities involved in the implementation and execution of laws, has led to counterfeit products being freely available in Sri Lanka.

Accession to the Madrid System should be a part of a coherent export/trade strategy. It should not be done in isolation; it shouldn’t only focus on institutional and operational capacity but needs an appropriate renewal of legislation.

Having said that, the enforcement climate should be prioritized in Sri Lanka by spreading IP awareness to give the lead to the Madrid Protocol, to provide effective legal protection of registered marks, and to give access to national brands to be elevated to the international brands level in a fair competition environment and extensive market with foreign marks. Nevertheless, necessary laws have to be enabled to support the effective implementation of the Madrid Protocol, which aims to the promotion of trade and the attraction of more investments in Sri Lanka.

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Qatar’s adoption of the GCC Trademarks Law Implementing Regulations                                    

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Intellectual property (IP)

Intellectual property (IP) represents a vital aspect of modern business. Therefore, Qatar has established a robust legal framework to protect various forms of intellectual property.

The Ministerial Decision No. 56 of 2023 has been issued by the Qatari Ministry of Commerce and Industry adopting the GCC Trademarks Law (Gulf Cooperation Council) and its implementing regulations. 

GCC Trademarks Law and its implementing regulations entered into force in Qatar on August 10, 2023, and hereafter “Qatar has become the fifth Gulf Cooperation Council (GCC) country to implement the GCC Trade Marks Law (the TM law) marking a further significant development for trade mark practice and cooperation in the region.”

Qatar is now the fifth GCC country to adopt this Law. Kuwait, Oman, Saudi Arabia and Bahrain have already adopted it, except the UAE that has not implemented it yet.

The Implementing Regulations of the Trademarks Law of the Gulf Cooperation Council Countries adopted by Qatar replaced the articles related to Trademarks as per the Law No. 9 of 2002, the Qatari National Law, and operated direct and significant changes in Trademarks Law.

Published on 9 July 2023 in the Qatar Official Gazette, the Ministerial Decision should have come into force on the second day of publication: 10 July 2023. Nevertheless, the Intellectual Property Rights Protection Department at the Ministry of Commerce and Industry issued circular number 2/2023 on 13 July 2023 stating that the Department will apply the Decision starting from 10 August 2023.

Therefore, the adoption of the Implementing Regulations of the Trademarks Law of the GCC has entered into force in Qatar on August 10, 2023. 

The main changes operated by adopting the GCC Trademarks Law are related to Implementing New Deadlines, Modifying the Official Fees and Bringing out New Practical Aspects:

  • The period for examination should be 90 days from filing.
  • Where an application is accepted with conditions an applicant has 60 days to appeal the decision or 90 days to conform with the condition or the application will be forfeited.
  • Where an application is rejected, an applicant has 60 days from the date of notification to appeal, or the application will be forfeited.
  • Where an acceptance decision is issued an applicant has 30 days from notification to pay the publication fees or the application will be forfeited.
  • The opposition period has been reduced from 4 months to 60 days.
  • Increase in the official fees of some services, and decrease in others.

 Issued on 18 June 2023, published in the Qatar Official Gazette no. 9 of 2023 dated 9 July 2023.
 Sinead Quigley, Qatar: Fifth Gulf Cooperation Council to Implement The GCC Trade Marks Law, 20 July 2023, mondaq, https://www.mondaq.com/ 

In addition to that, the GCC Charter originally states that the basic objectives are to have coordination, integration and inter-connection between Member States in all fields, strengthening ties between them through formulating similar regulations in various fields.However, it is eminent to notice that the Trademark law is not a unifying law like for instance the GCC Patent law, in that brand owners will still need to protect trade marks in each GCC member state of interest that has adopted it, and each state still has a lot of discretion regarding its interpretation and the practical implications. However, it seeks to bring about further practice harmonization in registration and enforcement practices across the region.

On the other hand, official fees being increased may not be suitable for many brand owners knowing that the region is already expensive. Nevertheless, reducing the lengthy time periods of the examination, publication, opposition, … will be very advantageous for the enforcement and the effectivity of the procedure.

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As a result, Qatar’s implementation of the GCC Trademark Law increases significantly Qatar’s international profile and active role in trademark protection, through harmonizing trademark regulations and level of protection in all member states. Qatar’s commitment to protecting intellectual property rights underscores its dedication to fostering innovation and encouraging a knowledge-based economy in the region. 
Sinead Quigley, Qatar: Fifth Gulf Cooperation Council to Implement The GCC Trade Marks Law, 20 July 2023, mondaq, https://www.mondaq.com/ 

United Trademark & Patent Services Triumphs in Landmark Intellectual Property Case: A Turning Point for Businesses in Jordan

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Landmark Battle

In a landmark legal battle, United Trademark & Patent Services, representing American Eagle, secured a resounding victory in a critical intellectual property case before the Jordanian courts. The case revolved around an individual accused of importing and selling counterfeit goods bearing imitated trademarks owned by a renowned American company.

The court meticulously examined the evidence presented by both parties during the open trial. Witness testimonies and an expert report substantiated the claims made by United Trademark & Patent Services on behalf of American Eagle. The evidence overwhelmingly pointed to the defendant’s deliberate infringement of American Eagle’s trademarks, violating Article 37 of the Jordanian Trademark Law.

The defendant had imported a shipment of jeans bearing counterfeit trademarks identical to the complainant’s. This act of imitation was deemed to have the potential to mislead the public, jeopardizing the reputation of American Eagle’s brand.

The court’s momentous decision in favor of American Eagle serves as a crucial turning point for intellectual property rights in Jordan. This ruling sends a clear message to counterfeiters and imitators that the Jordanian legal system will uphold the rights of innovators and creators, ensuring the protection of their intellectual property.

One key aspect the court emphasized was the importance of trademark registration. American Eagle’s trademarks were registered with the Intellectual Property Department at the Ministry of Industry and Commerce, providing them with legal protection under the law. This serves as a powerful reminder to businesses operating in Jordan to safeguard their intellectual property by ensuring proper registration of their trademarks.

The impact of this decision goes beyond American Eagle; it sets a precedent that will benefit businesses across industries. The ruling underscores the commitment of the Jordanian Ministry of Justice to foster a fair and transparent business environment, where intellectual property rights are upheld and respected.

For present businesses, this decision provides much-needed assurance that their trademarks will be protected under the law. It encourages innovation and creativity, as companies can now confidently invest in building strong brands, knowing that the legal system will defend their intellectual property.

Furthermore, this landmark ruling has far-reaching implications for future businesses looking to establish themselves in Jordan. The court’s unwavering commitment to enforcing intellectual property rights sends a strong signal to investors and entrepreneurs about the country’s business-friendly environment. It reinforces Jordan’s position as a destination that values and respects intellectual property, providing a stable foundation for economic growth and investment.

This decision also serves as a deterrent to potential counterfeiters and infringers, discouraging them from engaging in unlawful practices that undermine the integrity of businesses and harm consumers. By upholding the rule of law and protecting intellectual property, the Jordanian legal system creates a level playing field for all businesses, fostering healthy competition and encouraging fair trade practices.

In conclusion, the triumph of United Trademark & Patent Services in the landmark intellectual property case on behalf of American Eagle is a pivotal moment in Jordan’s legal landscape. The court’s decision sets a powerful precedent that will benefit both present and future businesses, providing them with the confidence to invest, innovate, and protect their intellectual property. With a robust legal system supporting intellectual property rights, Jordan is poised to become a hub for creativity, innovation, and sustainable economic development.

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Therefore, Egypt has proven an active function in playing a pioneering role in IP on both national and international arenas. Enforcement and Actualization of IP and related laws, are necessary to witness the positive impact EAIP will have in shaping the future of intellectual property in Egypt, by increasing Egypt’s pioneering role in IP achieving Global Innovation and Sustainability Goals.