１．Summary of the United Arab Emirates (hereafter referred to as UAE)
The UAE is a petroleum-producing state situated on the Persian Gulf coast. It has a population of 9.45 million (as of 2014) and a GDP of app. 400 billion dollars (as of 2014). Its name is derived from the fact that it is a union of seven emirates including Abu Dhabi and Dubai. The UAE is a member the Gulf Cooperation Council (hereafter referred to as GCC), the regional cooperation organization in the Persian Gulf region.
Chief industries are petroleum and natural gas, but in recent years as exemplified by Dubai, as well as focusing on tourism, finance, etc., the UAE has also been putting efforts into creating industries for alternative energy, such as solar power generation. The UAE’s main exports are petroleum, natural gas and metals, with Japan being the major export destination.
Although the UAE’s area is just 20 percent of Japan’s, it possesses the world’s fifth-largest petroleum reserves. In addition, since it is a wealthy state with a GDP per capita of 42,000 dollars (as of 2014) and an income per capita that ranks amongst the world's highest, and since its market is on a par with those of developed countries, it is a popular target for investment.
2. Summary of the UAE’s Intellectual Property System
Patents, utility models, and designs in the UAE are protected by the Patents, Designs and Industrial Models Law No. 17 of 2002 (hereafter referred to as Patent Law), while trademarks are protected by the Trademark Law No. 8 of 2002 (hereafter referred to as Trademark Law).
|Necessity of a local representative
|Language of application
|Request for examination
||Twenty years from filing date
||Ten years from filing date
||Ten years from filing date
||Ten years from filing date (renewal possible）
- (1) Applicant eligibility
The inventor(s) or his/her successor(s) may apply. (Patent Law, Article 7)
- (2) Application documents, languages
It is necessary to file patent applications in Arabic, attaching English translations of the specification, claims, drawings and abstract.
To supplement the application, a Power of Attorney, an assignment deed, an establishment certificate of the applicant's company (if applicable) and certified copies of one or more optional priority documents must be submitted within three months from the filing date of the application.
There are no limitations on claim formats, meaning Jepson, Markush, and other formats are allowed. There are also no restrictions on claim dependency or number of claims, nor any extra fees for a large number of claims.
Application maintenance fees must be paid during the period from January to March each year. It is possible to pay these fees from April to June with an additional fee for late payment.
The UAE has acceded to the Paris Convention and it is also a signatory to the Patent Cooperation Treaty (PCT). In addition, it is a member of the GCC. Therefore, with regard to patent applications, in the event of filing an application claiming a priority, it is possible to request protection:
- 1. By filing an application under the Paris Convention in the UAE
- 2. By filing an application under the Paris Convention in the GCC
- 3. By designating the UAE in a PCT application
If a patent is registered in the GCC, patent right extends to all six member states (the UAE, Bahrain, Kuwait, Oman, Qatar, and Saudi Arabia).
The due date for the national entry of PCT applications 30 months from the priority date.
- (4) Developments from application to registration
1. Formality examination, substantive examination
If formality requirements are fulfilled, on condition that the examination fee is paid, substantive examination is conducted. The examination fee should be paid within 90 days from the filing date of the application or national entry date. If the examination fee is not paid, the application will be deemed to be withdrawn.
Formality examination is conducted by the UAE Industrial Property Department, but substantive examination is conducted by the Korean patent office (KIPO) or the Austrian Patent Office.
Further, no systems of preferential examination or accelerated examination exist.
2. Publication of application
Since there exists no system for the publication of applications, no publication is conducted.
3. Patent requirements
・ Novelty, inventive step
The invention is considered to possess novelty if it is not anticipated by prior art (Patent Law, Article 2). Novelty is not considered in geographical terms such as domestic or international.
・Exceptions to loss of novelty
Inventions disclosed at expositions in the UAE may obtain provisional protection under certain prescribed conditions (Patent Law, Article 3)
・Grounds for non-patentability (Patent Law, Article 6)
The following items may not be granted patents:
(i) Plant varieties and animal breeds, as well as essentially biological methods for the production thereof.
However, microbiological methods and the products thereof are excluded.
(ii) Diagnostic and therapeutic methods, as well as therapeutic methods involving surgery with regard to humans and animals.
(iii) Scientific principles, discoveries and mathematical methods.
(iv) Mechanisms, plans, rules and methods for exercising psychological practices, playing games or conducting business.
(v) Inventions that contravene public order and morality
Amendments can be made at any time before examination begins. Once the examination begins, amendments can be made in response to an office action. Addition of new matter is not permitted.
5. Divisional Applications
Divisional applications can only be filed after receiving an Office Action due to failure to meet the requirement of unity of invention.
6. Responses to reasons for refusal
An Applicant will have an opportunity for amendment if an application has been considered not to satisfy the requirements for registration. It is possible to appeal to the Committee for decision of refusal within 60 days from the date of notification of the decision of refusal (Patent Law, Article 12).
Grant of patent takes an average of two to eight years from the date of application.
7. Term of duration of patent right
The term of duration of patent right is twenty years from the filing date (Patent Law, Article 14).
8. Opposition proceedings/invalidation trial
When a patent is granted, the invention is published in the Patent Gazette. Interested parties may file an opposition within sixty days from the date of publication. If no opposition is declared, or no grounds for opposition exist, the patent is entered in the patent register, and a patent certificate is issued (Patent Law, Article 13).
If a patent is entered in the patent register in error, interested parties may appeal to court for an invalidation trial (Patent Law, Article 34).
9. System of offer of information by a third party
Impossible since there is no such system.
10. Implementation duties
If the invention has not been implemented for at least three years after the date of patent grant, or if its implementation is insufficient, at the request of an interested party it may become subject to compulsory license grant (Patent law, Article 24, Paragraph 1 (a)).
11. Infringing Acts
The following acts are deemed as an infringement of patent rights when carried out by a person other than the rightful patentee:
a. For product inventions: production, use, sales, proffering of sales, and import of the product.
b. For industrial method inventions: use of the method, use of a product directly obtained via the method, sales of such a product, proffering sales of such a product, and import for the purpose of any of the above.
4. Utility models
A utility model is defined as protection granted to inventions which have industrial applicability, but are not sufficiently inventive or creative to be granted a patent (Patent Law, Article 5).
The standard for an inventive step is not as high as that which is required in the case of patents; however utility models are subject to substantive examination, which is not the case in Japan (Patent Law, Article 12).
The term of duration of utility model right is ten years from the filing date (Patent Law, Article 14).
With regard to other matters, the normal patent system applies.
A design is defined as”an arbitrary composition of lines or colors, or an arbitrary combination of the characteristics thereof that possesses a distinctive appearance and serves as a pattern for an industrial product or a handicraft.” Three-dimensional figures are protected as "models" (Patent Law, Article 1). Designs and models are hereafter collectively referred to as "designs".
- (1) Application documents/languages
A request for registration that includes an explanation of novelty and an indication of the design (in Arabic and English) must be submitted.
Since only patent applications are handled in the GCC, in the event of claiming a priority right, the application must be filed in the UAE under the Paris Convention. The period of priority is six months.
- (3) Developments from application to registration
No substantive examination is conducted. If formal requirements are fulfilled, a decision for protection is made, and upon payment of a prescribed fee, the design is published (Patent Law, Article 48). If no opposition is filed later, or if no grounds for opposition exist, a registration is delivered. No registration marking is necessary.
The term for protection is ten years from the filing date (Patent Law, Article 49).
・ Systems peculiar to designs
No systems of partial designs, related designs, designs for a set of articles, or secret designs exist.
・ Grounds for non-patentability
Designs that are not innovative or novel, as well as designs that contravene public order and morality, are not eligible for registration. (Patent Law, Article 47)
・ Opposition proceedings, invalidation trials
A system of pre-grant opposition exists. Interested parties may file an opposition to the decision to grant protection to a design within sixty days from the date of the public announcement. (Patent Law, Article 48).
Further, interested parties may appeal to court for an invalidation trial (Patent Law, Article 34 applies in this case).
・ Infringing Acts
Acts considered to infringe upon design rights are the same as those for product inventions detailed above.
Below is a summary of the UAE trademark system. Features common with patents are omitted.
- (1) Applicant eligibility (Trademark Law, Article 6)
Persons of natural or legal entity are eligible to become applicants.
- (2) Eligibility for protection (Trademarks Law, Article 2)
- Names, words, signatures, letters, figures, drawings, addresses, hallmarks, seals, patterns, ornaments, other marks, or combinations thereof.
- Vocalized sounds associated with a trademark are considered a fundamental component of that trademark.
- Marks of goods and marks of services are both recognized.
- No regulations with regard to three-dimensional trademarks exist.
- The UAE has adopted the GCC Unified Trade Marks Law. Since said law provides for protection of olfactory trademarks, it is possible that the national law will hereafter be amended to render olfactory trademarks also eligible for protection.
- (3) Application documents and languages
- In the Request for Application, besides bibliographic items, a copy of the trademark to be registered, a simple explanation of the trademark to be registered, and the goods or services and their classification must be described (Trademark Law implementing by-laws, Article 5).
- In cases where no specific color or combination thereof has been designated, the trademark is considered as registered with regard to all colors.
- The language of application is Arabic. If the mark includes words or phrases in a foreign language, a certified translation into Arabic must be attached to the Request for Application.
- No system of multiple-class trademark application exists. It is necessary to file separate applications for each class of goods or services (single class applications).
- The UAE has not acceded to the Nice Agreement, but it exercises classification of goods and services based on the Nice Agreement classification. However, in all classes of goods and services, alcohol-related trademarks are not eligible for registration.
- Registration of collective trademarks is also allowed.
It is possible to file an application claiming a priority right under the Paris Convention. The UAE is not a signatory to the Madrid Agreement and Madrid Protocol.
- (5) Flow from application to registration
 Laying open of application
It is not done because there is no system of the application opening to the public.
 Substantive examination
No system of examination exists. Principal grounds for unregistability are listed below (Trademark Law, Article 10).
- (i) Trademarks that lack distinctiveness
- (ii) Trademarks that contravene public order and morality
- (iii) Geographical names which might lead to confusion with regard to the place of origin of the goods or products
- (iv) Marks that might mislead the public with regard to the place of origin/region of production of the goods or services, or marks which include false information, as well as marks that include fictitious, copied, or counterfeited trade names
- (v) Trademarks which are a translation of a publicly known or an already registered mark and which if registered, would cause consumers to confuse the origin of the goods designated by the mark in question with similar goods
- (vi) Marks which include a coat of arms or currency of the UAE or another country.
→★After the amendments of 2002, registration of these marks (vi) became possible.
- (vii) Marks similar or identical to previously registered trademarks concerning similar or identical goods or services may not be registered. Further, even when a mark is used with regard to different goods or services from those designated by an existing trademark, if a connection with said goods or services is implied or there exists a possibility that the interest of the trademark owner will be damaged, registration is not possible.
 Protection of trademarks recognized abroad
- Internationally-recognized trademarks may not be registered unless registration is requested by the original owner (or his/her representative) (Trademark Law, Article 4).
- Registration is not allowed in the following cases, even with regard to goods and services not identical or similar to the ones designated by the recognized trademark:
a) If use of the trademark suggests some connection with the goods and services designated by the registered trademark.
b) If use of the trademark may result in damaging the interests of the owner of the registered trademark.
 Office Actions
If the application fulfills the requirements for registration, a decision to grant a trademark registration is made within thirty days from the filing date (Trademark Law, Article 11).
The Trademark Department usually conducts a preliminary examination report within six or eight weeks from the filing date. After one or multiple reports are conducted, a decision for rejection, approval, or, in some cases, approval under certain conditions, is made with regard to the mark.
Regarding decisions for rejection, an appeal may be filed with the Committee within thirty days (Trademark Law, Article 12).
 Occurrence/duration of trademark right and opposition proceedings
- If the application is approved, before registration of the trademark takes place and upon payment on the part of the applicant, the Ministry publishes the trademark in the Trademark Journal as well as in two daily newspapers issued in Arabic in the UAE. (Trademark Law, Article 14).
- Interested parties may file an opposition within thirty days from the last announcement date.
★Since the term for filing opposition is short, it is necessary to pay close attention to announcements.
- When the trademark has been registered, the registration is considered to have gone into effect on the filing date (Trademark Law, Article 16).
- The term for protection is ten years from the filing date. Upon request, it is possible to repeatedly renew the term for ten years each time without additional examination.
- There is not system for defensive marks.
 Cancellation trials
- With regard to unlawful registration, interested parties may request a court order to cancel the trademark registration (Trademark Law, Article 21).
- If it is proven that the registered trademark has not been used for five consecutive years, in response to a request by an interested party, the civil court in charge will order cancellation of the trademark registration (Trademark Law, Article 22).
 Trademark right infringement, etc
The following persons will be sentenced to imprisonment and the payment of at least 5,000 AED, or one of the two (Trademark Law, Article 37).
- All persons who imitate or counterfeit registered trademarks or illegally use imitate trademarks or counterfeit trademarks in order to mislead the public
- All persons who use trademarks belonging to other persons for their own products in bad faith or illegally use such trademarks
- Persons who intentionally sell products that bear imitative, counterfeit, or illegal trademarks, or propose or distribute their sales, or possess with the intent to sell them
- Persons who intentionally offer or propose to services under trademarks that are imitative , counterfeit or illegally used.
* Administrative relief measures against imitative trademarks can only be used in the emirates of Abu Dhabi, Sharjah and Dubai. Care is required since administrative relief measures cannot be taken in the other four emirates at the present.
1. JPO Entrusted JETRO Intellectual Property Information, Imitation Countermeasures Manual Middle East (March 2009, JETRO) (in Japanese)
2. Investigation Research Report on the Intellectual Property Systems of Russia, Central and South America and the Middle East and their Current Practices (March 2010, AIPPI Japan) (in Japanese)
3. Japan institute for promoting invention and innovation, Support project for measures against industrial property right infringement etc. in foreign countries, Mini guideline for industrial property right systems in the world and outline of measures against industrial property right infringement.
4. Written reports of studies regarding the actual conditions of the examination practice for patents, utility models, designs and trademarks as well as regarding examination guidelines and examination manuals in the countries of the Middle East (International Association for the Protection of Intellectual Property of Japan)