United Arab Emirates: Trademark Disputes
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.
