UAE New Year Update

The UAE has recently updated its law on industrial property through Federal Law No. 11 of 2021, with a focus on amending and updating the current Patent and Design Law practice. The Law came into effect on 30 November 2021 and will bring with it new Implementing Regulations for Industrial Property. However, as the regulations are yet to issue, the existing regulations under Federal Law No. 17 of 2002 will continue to dictate practice.

Patents, Designs and Copyright Law Changes:

Important aspects of the preparation, prosecution and enforcement of Patents and Designs are part of the new changes brought in by the Law. In particular, the UAE moves from an absolute novelty state to a novelty grace period state. Any disclosure of an invention or design prior to filing, and provided the disclosure originated form the applicant or inventor or a person associated therewith, will not amount to a bar to novelty and prevent the acquisition of registrable rights. This is akin to the grace period provided under the US system. The move looks to enhance the ability of applicants and inventors to pursue their intellectual property and markets which may have previously been lost due to errant comments or behaviour.

The new Law also introduced an urgent application process, available to all applicants. The process, which is still yet to be defined, will allow applicants to expedite prosecution of their Patents or Designs, despite the date of filing. The process effectively allows applicants to jump-the-queue and reach the market before their competitors. The protection period for design registrations has been increased from 10 to 20 years, which brings it into closer alignment with the European Community Design’s practice. The extended protection provides more time for businesses entering the market to rely on their existing IP while building their customer base and developing new products.

A new Copyright Law became effective as of 2 January 2022, under Federal Decree-Law No. 38 of 2021 on Copyrights and Neighbouring Rights. A number of sections under the previous Law have been replaced, amended or even removed. One such amendment is the disposal of future rights which, under the previous Law was limited to five Works. The new Law allows the parties to contract as to the number of future Works which may be disposed, provided such disposal does not amount to all of the Author’s future works. This position helps clear up ownership issues for new businesses when entering into contracts with creatives for developing and growing their brands. Additionally, a new Article - Article 28 – was introduced to manage the Author’s economic rights in relation to third parties. Previously the Law only provided for control of Collective Work to be with the person who organised and conducted such Work. The new Article now expands on this and provides for all Work to be treated in this way.

Change in UAE Working Week:

Starting on 1 January 2022, the UAE has switched to a Monday to Friday work week and align with a Saturday and Sunday ‘western-style’ weekend. Previously, the work week was Sunday to Thursday, and this remains the case in Saudi Arabia, Qatar and the other GCC countries.

For government employees, Friday will be a half-day ending at midday as it is the Muslim holy day and employees will have the afternoon off to attend prayers.

The UAE government has not mandated working days for non-government employees, meaning it is up to businesses to decide on their work week. This flexibility has meant various options available for businesses, including permitting flexible work from home arrangements on Friday; remaining on a Sunday to Thursday work week (particularly for those that predominantly do business with other GCC countries); an extended lunch break for Muslim employees to attend prayers; or in the case of the Emirate of Sharjah – granting their government employees a 3 day weekend from Friday to Sunday.

The move is seen to be positive for the hospitality industry and for organisations based in the UAE that conduct business internationally.

UAE joins Madrid Protocol

The United Arab Emirates acceded to the Madrid Protocol on 28 September 2021 and took effect on 28 December 2021, making the UAE the third GCC country to join the Madrid System. This means nationals and local entities can utilise the international trade mark filing system to protect their brand in up to 124 territories, which often offers a more cost effective route compared to national filings. In addition, foreign individuals and entities will be able to designate the UAE as part of any Madrid filings, rather than pursuing a national application.

At the time of writing, the Ministry of Economy has not issued any guidance or practice notes regarding the implementation of the Madrid system in the UAE, and so Madrid filings are not yet being accepted by the Trade Mark Office. What we do know is that the cost of designating the UAE in a Madrid application is CHF 1630 per class (despite the UAE now being a multi-class system), which is only around USD 10 cheaper than current national filing costs based on current exchange rates. We are of course still waiting on the Ministry to confirm if there are any changes to national filing costs in light of the new multi-class system. While there doesn’t appear to be much cost saving in choosing Madrid, the benefit is likely to come from no longer needing legalised Powers of Attorney (whether they will be required at a later date during examination/opposition remains to be clarified).

Accession to Madrid comes in line with a newly issued UAE Trade Mark Law, which took effect on 2 January 2022. While one of the most significant changes has been a switch to the multi-class filing system, we are still waiting for the Implementing Regulations to issue, so for now, things remain as is.

For those wanting to secure UAE trade mark registrations, please speak to Renée Nugent in our UAE trade mark team who can advise on the best strategy in light of the changes.

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