Tim Elliot: Welcome to Lawgical, the U.A.E.’s first and only regular weekly legal podcast. My name’s Tim Elliot. Lawgical is recorded here at the Dubai-based legal firm, HPL Yamalova & Plewka. As ever, here is the Managing Partner, Ludmila Yamalova. Nice to see you.
Ludmila Yamalova: Nice to see you too, Tim. Thanks for being here, as always.
Tim Elliot: Alright. This episode we’re discussing everything you need to know about trademarks, and I guess, most of us have seen that little TM that may appear next to a product or service that we use, but the background to it, I guess, most of us are not massively familiar with it. Let’s start there, Ludmila. How do we define, first of all, a trademark?
Ludmila Yamalova: A great start. A trademark in general, there are somewhat different definitions, more or less, the material elements are the same, and ultimately a trademark is a type of intellectual property which consists of recognizable sign, design, or expression that identifies products or services from a particular source and distinguishes them from others. The trademark owner can be an individual, a business organization, or any other legal entity. In the U.A.E., as per the U.A.E.’s trademark law, a trademark can be a name, it could be a word, it could be a signature, it could be a drawing or packaging, or it could be a combination of all of those elements. In the U.A.E., again at a very high level, a great emphasis is put on distinctiveness. In other words, whatever it is that you wish to trademark, it must be distinguished and different from other existing types of trademarks.
It is interesting because you can look at different trademarks and think, okay, that is just one trademark, but a lot of the times, trademarks that we are accustomed to seeing actually are a compilation or combination of multiple trademarks. For example, based on the definition that I have just laid out, the trademark could just be the name itself, and it has to be original and different from basically the ordinary meaning of that word. You could also trademark, in addition to the word, you can trademark the writing or the spelling of this word or the format, or the font, of that specific word, for example, the word plus the font. It could be the word, plus the font, plus the color of the font. Then, it could be the word, plus the font, plus the color, plus a logo that is attached to the word. Each one of these could be a separate trademark and you can also register all of them, the combination, as one trademark.
These days, because we use so many different services and so many different products, it actually does benefit a lot of trademark owners to have each one of these components to be trademarked individually. But ultimately, let’s say to simplify what it is we are talking about today in terms of trademarks, it is a form of intellectual property. What is intellectual property? If you want to break it down and make it even more simplistic in terms of property, you have the tangible property, for example, like my pen, or this microphone or a cup, or a piece of property, something tangible that more or less we can touch and feel, and that is the tangible or physical property. Then you have the intellectual property, and that is not something you can actually physically touch, so to speak, but it’s a conceptual idea, something proprietary, a concept or idea that is highly valuable. It may or may not be valuable when it’s formed, but the idea is as it becomes more recognized, better known, it becomes a lot more valuable, and that is why it is so much more important to protect it.
There are common and ubiquitous trademarks we are all accustomed to seeing, such as the Coca Cola trademark or Nike or any other sports brand. The importance of those logos and those names, such as the word Nike, are so essential because they are so defining of the product and the service and the whole proposition. If it wasn’t protected, such as the word Coca Cola or Nike, then anyone of us could use those and I could create my own little tea and slap a Coca Cola label on it, or I could design my own yoga pants and put a Nike logo on them. That’s why registering that type of intellectual property, that design or word or a sign, is so important because you’re trying to protect ultimately your business and that defines your business. In very broad terms and at a high level, that is what trademarks are all about and why they’re so important to protect, not just as a business, but also at a legal level to ensure that in the event your business is highly dependent on a trademark, that there is some sort of legal framework upon which you can rely to be able to enforce your right to that trademark.
Tim Elliot: It’s an interesting thing because I’m no marketing person or salesperson, but when I see a logo that I know or a logo that I trust somewhere, trust is the keyword. I’m used to that product. I know there is a certain standard. I understand what the brand stands for. I’m just explaining marketing to myself for the moment actually, but that’s why it’s so important. It’s a very emotive, almost at visceral level, isn’t it, that companies need to protect?
Ludmila Yamalova: Absolutely. It benefits both if you will, the ability to protect this kind of intellectual property benefits not just the business, but also the consumers, as you rightfully said. Let’s use another example of a trademark, Starbucks or McDonalds. For all those who like to travel, be it within the same country, or more interestingly, abroad and internationally, seeing that Starbucks logo or the McDonalds, although in many countries and perhaps too many that is not necessarily a welcome sign, but for those who are looking for consistency, for some sort of predictability, it’s a comfort. It’s very comforting for them to see a Starbucks in Greece, let’s say. They know exactly what to expect.
The reason they are able to expect that is because the brand itself, the company itself, say Starbucks, has been so vigilant about (1) creating the trademark, (2) defining exactly what it means and the different elements of it, and then (3) protecting it from a legal standpoint and (4) obviously and most importantly, combining or attaching then value proposition, the quality of service and its product to that particular trademark, which is their particular name. The business is able then to invest a lot more because they know that the more they invest, the stronger the brand will be, and they can take the brand elsewhere in the world and it will be equally protected in other parts of the world. That also benefits consumers who are able to rely on and find that same product and same service and the same trademark in other countries and know exactly what to expect.
It’s a win-win, but to come to it obviously takes years and years of development and success and failures in many ways. That is why, by the way, there are a lot Unknown Female businesses who once upon a time were successful and had very successful trademarks, and at some point, they just phase out as a business for one reason or another, and there is this practice where other new businesses perhaps are buying out the trademarks because it has already created this association and recognition and almost a vote of confidence and a confirmation for that particular product with that trademark. New businesses will buy out the existing trademarks that, once upon a time, were successful, were quite recognizable, but now less so, and then they just revive that particular trademark with either similar business or a similar concept, or somewhat different, but using that trademark purely because there is so much value in the recognition of that trademark, of that design, or that logo.
Tim Elliot: So, protecting a product or a service is important, and trademarking is one of the ways that you can protect your product or service. The thing is, trademarks differ from country to country, but in the main, it’s two things, isn’t it? It’s the difference between the Nice Classification and the Madrid protocol. Now that just sounds otherworldly to me. What is the Nice Classification? What is the Madrid protocol?
Ludmila Yamalova: Perhaps to give a better understanding of what those particular phrases or terms are, we take a step back and review the U.A.E.’s own trademark framework in terms of the laws and legislation. That, by the way, perhaps we take even another step back and remind ourselves that the reason trademarks in particular are important is because ultimately you hope to be able to use that same trademark in other countries, and not just use them in other countries, but protect them in other countries and then enforce them in other countries as well. Now that takes us into multijurisdictional areas of business and law in general.
Let’s say if I have a trademark in the U.S., can I also protect and rely on that trademark and use it and enforce that trademark in Brazil? Every country has its own trademark laws. These are quite complex laws in most countries these days, and they evolve quite rapidly because of the different forms of media that we use. Every country has its own legal framework to protect trademarks that sets out a definition of a trademark, what governing authorities for a trademark, the registration mechanisms, and the protection elements.
If you have a very successful trademark in let’s say the U.S., but then how can I ensure that trademark is not used or abused elsewhere? To have to go through that same process of registering that same trademark in all of the other countries where you want to use the trademark, remember, you either want to use the trademark or you want to prevent others from using your trademark in those other countries, it’s an expensive and laborious and time consuming process to register that same trademark in Brazil, France, Australia, Kenya, and so on and so forth. That is what it would require, especially these days, in our global economy and in our digital world, where if you have anything successful these days it is going to exist in a digital format as well. You will have a website, and the website will have the trademark on it. It will have your logo. How do you prevent others on the other side of the world, or even in a neighboring country, from using your logo and capitalizing on it? Now you have spent all this time and creative genius and perhaps a financial investment in building up this logo and now somebody across the world is using it, often to provide the same kind of service or same product under your trademark.
How do you ensure that (1) you can have protection of your trademark and you can use your trademark in other countries, and then (2) prevent others from using your trademark for their own businesses or services? This is where a number of countries have come together and signed what they call protocols and various international treaties to basically allow for protection of specific trademarks on an international level. In very simple terms, all those countries that sign onto these protocols or these treaties, then can benefit from the protection that is laid out or outlined in these protocols.
For example, if you have 20 countries signed up to the Madrid Protocol, and you have your original trademark from the U.S. and you have registered it in the U.S., now once you are a member or signatory to the Madrid Protocol, you can now start enforcing. You have basically the same benefit of protection of your trademark not just in the U.S., but in all the other countries that are signatories to the Madrid Protocol, those other 20 countries. That is basically what these protocols are.
Before I go into the protocol, let’s bring it back to the U.A.E. The U.A.E. had had a trademark law for a while, and it was recently replaced with a new law. Now we have, at a very high level in terms of the legal framework, the U.A.E. has Federal Decree Law 36 of 2021 that was recently passed. This law cancelled out the previous trademark law and set out a new legislative platform for the definition of a trademark and the protection of a trademark in the U.A.E. Then following that trademark law, as is typical in the U.A.E. and other jurisdictions as well, there were executive regulations that further clarified certain aspects of the main trademark law. Those executive regulations were created by virtue of Cabinet Resolution 57 of 2022, just last year basically, the U.A.E. further clarified and defined its trademark law by virtue of these executive regulations. Then shortly after the U.A.E. issued its new trademark law, it also adopted, as you mentioned, Tim, before that was called the Nice Classification System by virtue of Federal Decree Law 156 of 2021 and then also adopted the Madrid Protocol by virtue of Federal Decree Law 67 of 2021 which came into effect on December 28, 2021. At a high level, these are perhaps the four legislative or legal authorities on which to rely on, the main ones, for the purposes of trademark registration and trademark protection. There is the main law, its regulations, plus the U.A.E. adoption of these two international conventions.
Tim Elliot: Okay. I just wanted to say, we have got a list of questions coming in. We’re live on Facebook. We’re like on TikTok. We’re live in Instagram while we’re recording this podcast. I thought we could answer a couple of these now. You kind of answered, if I trademark my product in the U.S., does that apply here as well? As long as you’ve applied locally. In a short while, I’m going to get you to run through, if you would, how you actually register your trademark, Ludmila, so we’ll look at the nuts and bolts. But I really like this question. Can you trademark a cake recipe? Somebody is asking.
Ludmila Yamalova: Interesting. Not the recipe so much because a trademark focuses more over the creative element and the visual element of intellectual property. That’s about the name, for example, of the recipe, how it is spelled out, how it is written out, the colors, and perhaps the logo that is attached to it. That’s what a trademark is meant for, not the ingredients that go into a recipe. A recipe, generally speaking, would be protected by a different type of intellectual property, and that is called copyright and/or also in the past there have been a recipes that have also been patented, and that is yet another form of intellectual property. At a high level, intellectual property in more traditional terms, consists of three different types, 1) trademark, (2) copyright, and (3) patent. A patent usually refers to a technological advancement, engineering solutions, although there have been a few recipes that have been actually patented, and that is so much the step-by-step recipe, but rather because there have been chemical components and chemical formulas that were relied on in the particular recipe. If there is that kind of a scientific element involved, then yes, you can patent it. A recipe has been known, for example, a Japanese sponge cake or something like this was patented, in fact, but otherwise most recipes are subject more to copyright law and not as much trademark law.
Tim Elliot: Okay. Let’s take a hypothetical example, for example, Ludmila’s Legal Cupcake store and your tagline was: Tastier than the law, and even better than you can imagine, or something. You would trademark that aspect, rather than the cupcake itself? I’m sticking with cakes here because I like cake.
Ludmila Yamalova: I like the sound of it, so maybe you want to jot it down and we can regroup after the podcast and see if we can trademark that. Legal Cakes or Cupcakes. You would in fact trademark just the name, the name and the logo, if there was a little cake or a hat.
Tim Elliot: A gavel.
Ludmila Yamalova: A gavel, for example, yes, next to it. That’s what you would trademark, but in terms of the actual recipe, how much flour you put in, how much sugar you put in, that’s copyrightable material, not trademarkable.
Tim Elliot: The scales of justice would work really well with two cupcakes, by the way.
Ludmila Yamalova: I like the visual. I like the visual. We’ll have to talk about it further offline so that nobody else steals our ideas.
Tim Elliot: Thank you so much. Let’s have another question now. We are on Facebook, Instagram, and TikTok this morning. This is all about trademarks on Lawgical, the HPL Yamalova & Plewka podcast. An interesting question, I think. What are the possible grounds for rejection or refusal to get a trademark for any particular product or service?
Ludmila Yamalova: There are many, many possible grounds. One possible ground, for example, is it is just ordinary. You cannot trademark a ubiquitous name or common name, something that is already in the public domain. For example, just as much as I’d love to be able to trademark my own name, that’s not unique to me. There are others with the same name. You cannot trademark that name or an ordinary element that relates to a person. There has to be some sort of distinguishing characteristics. That is one of the mandatory elements is that it has to be different. It has to be distinguished from whatever else is out there in order to qualify for a trademark. Also, you cannot trademark certain public symbols or public words, let’s say city names. You cannot take a city name or country name and trademark it to yourself. That is already called basically a common property or a public property in the public domain. You cannot trademark that. This is why we have trademark law. You cannot trade something that belongs to someone else. That is the importance of trademark law and when enforcement comes into play. It has to be distinguishable. It has to be creative as well. It has to also, in a way, be representative of the product or the service that you want to ultimately provide under that trademark. That is also an element in many ways. The idea of a trademark is that it should not be misleading.
If I trademark a name that is suggestive that I, for example, I know how to find a space, I better know how to find a space. Then if I am using it for my other services, let’s say for legal services, that is misrepresentation to the outside and misleading to consumers. One of the main elements of trademark is that it must not be misleading, and it obviously must not steal from the public, so to speak, or is already in the public. You cannot prevent me from using a word that belongs to the public use. There are a few exceptions. For example, if you take a Madonna, the singer. Madonna is not a unique name, but Madonna as a singer is a very unique concept obviously. There are some things that are involved in her brand that perhaps that particular word could be trademarked to an extent if it is associated with her image or her persona and her history. Also, often people just register trademarks and they don’t use them. You can actually lose the right to a trademarked if it has not been used, if it is a dormant trademark, because sometimes you have competing trademarks in terms of least registration, but if one has been used by one country by one business, and the other one has not been used. Sometimes you can basically override the right of a different trademark, that has not been in use, by the one that has been in use. It’s a very complex process, but generally speaking it has to be something that is distinguished from what else is out there.
Tim Elliot: It’s a tangled web that you’re weaving. But the Madonna example is a really interesting one because Madonna is – that’s her name, isn’t it? I think it’s her first or second name, but it is her name, but it’s undeniable much more than her name, and it stands for this kind of – a cultural icon is a little bit too much, but I think a lot of people would consider her that way and therefore there is a need for that image to be created.
Ludmila Yamalova: Indeed. But that’s an example of where you can actually get your trademark registered based on what you have created that goes in support of that trademark. The creation in her case is basically her legacy, her music, her performances, her name and continuity of it. There she has basically earned, if you will, the right to trademark certain aspects of that name, a lot of investment and a lot of sweat equity that went into it in order to give her the right or warrant registration of a trademark in that particular case.
Tim Elliot: Okay. We’ll stick with the questions for a short while from Facebook, Instagram, and TikTok. Here’s one for you. We’ve answered it. Can trademarks be issued on a geographic basis and geographic locations? If one exists in Dubai, can it also be issued in a different owner in America? It’s a variation on a theme you have kind of answered there. Ludmila, how would respond to that?
Ludmila Yamalova: Perhaps before we answer these kinds of specific questions, we can go back into the definition and a little bit of the Nice Classification system and the Madrid Protocol because they will help us answer these questions from a legislative standpoint. There are these two international, if you will, laws, international protocols or treaties, whatever they are called. One is called the Nice Classification system, and the purpose of the Nice Classification is to harmonize trademark registration systems in different countries. This is done by creating different categories under which trademarks related to specific goods or services can be registered. For example, within the food category, there are so many different subcategories. Think about the categorization of the different types of products and services that exist in the world. Wouldn’t it be nice to have some kind of standard groupings or categories, and that is basically what the Nice Classification system is all about. A number of countries over the years have come together and created these different categories in terms of trademark registration. All of those countries who are signatories to the Nice Classification can benefit from this harmonized trademark registration system.
Let’s say if you are in the pharmaceutical or some sort of food products, then you will know exactly under which category your product would fit. It would be the same sort of category of products you would be registering your trademark in and you would be able to benefit and rely on this classification in different countries that are signatories to the Nice Classification. Those states who are members of the Nice Classification system and which have fully adopted it into their laws and regulations will apply the same categories created by the Nice Classification system.
The U.A.E. finally adopted the Nice Classification system and that was just at the end of 2021 and that was by virtue of Federal Decree Law 156. So, as of 2021, the U.A.E. is now also a member to the Nice Classification, and therefore, it follows and to some extent it is still a work in progress, but it is basically going to use the same classifications and same categories for trademark purposes as all of those countries that are signatories to the Nice Classification.
Now, the next international legal authority is called the Madrid Protocol. The Madrid Protocol allows trademark owners protection of their trademarks beyond borders. Basically, when we go back to the question about trademark owners, if you have a trademark in one country, can you benefit from it in another country? That is basically the Madrid Protocol. How it works is a trademark applicant applies for the registration of their trademark via the World Intellectual Property Organization, or the WIPO registry. Then they can choose to register the trademark in multiple member states of the Madrid Protocol.
You need to have an originating country in which you have the trademark. For example, if I have a U.S. trademark which I have registered, then I apply through the WIPO registry under the Madrid Protocol to have my trademark registered in X number of these Madrid Protocol countries. You go into the system. From the website you can select, this is my trademark that originates in the U.S., and I want to also register this trademark in the following number of countries that are part of the Madrid Protocol by virtue of doing that. It is not by default. It is not automatic. You do need to go through the process. That is, by the way, just generally speaking in trademark. To be able to benefit from it, you do need to register it. You need to do something about it, which is different from copyright, because copyright is created upon creation. However, with trademark, in order to have an enforceable trademark right, you need to actually register it in the system. Just because you have your trademark in the U.S. system, and the U.S. is a signatory member to the Madrid Protocol, does not give you automatic protection of your trademark in all of those countries. You do need to opt in and make a concerned effort and register under the Madrid Protocol through WIPO and select in which other countries you want that particular trademark to be registered.
This obviously results in significant savings in terms of time and cost because it allows you to benefit from trademark protection in multiple countries basically at the same time by virtue of submitting one application. Once again, the good news is the U.A.E. also adopted the Madrid Protocol just at the end of 2021, a little over a year ago, and that, as I mentioned before, that was with Federal Decree Law 67 of 2021. Now theoretically the Madrid Protocol is now in effect. In terms of how it’s being practiced for the time being, it is still a bit of a work in progress, but in legal terms we are now a country subject to the Madrid Protocol, so theoretically if you have a trademark registered in the U.A.E., then you can use that trademark and register in the WIPO registry and you can also select where else you want your trademark to be protected, and in theory, vice versa. Let’s say if you have a trademark originating from Spain, and it’s registered in the WIPO registry, now you can select the U.A.E. as one of the states where your Spanish trademark would also be protected. Again, this is a fairly new law still and there are some systems that still need to be implemented and adjusted to implement the law fully, but basically at the present time, and going back to the previous questions, if you are a member of one of these countries, if you have a trademark in the U.S., and the U.S. is a member of the Madrid Protocol, so now you can select to register your trademark also in the U.A.E. without having to come into the U.A.E. and register the trademark from within the country.
Tim Elliot: Sure. Also it means that if you are looking at the WIPO registry, you can see if you are infringing on any other trademarks with your trademark in your country, I guess, as well, or if you’re about to register one. It gives you a way of being original, doesn’t it?
Ludmila Yamalova: It’s interesting. It’s a very good question because at the same time, yes, but you also brought up another wrinkle. Let’s say, yes, you are coming from the U.S. and you want to register your trademark also through the Madrid Protocol in the U.A.E., so you apply to add your trademark to the U.A.E. and then it turns out there is somebody else here in the U.A.E. that is already using a similar trademark or the same trademark. That too can happen, by the way, and that’s called challenging a trademark. There is a process as well where the trademark is just published out there for parties to comment or to challenge. It is also possible that just because your trademark is valid and existing in 10 countries, it will be equally registered in another 10 countries. But there could be some countries where that same trademark might have already been used and they have precedents and priority rights over the trademark. There are some nuances to that too.
Tim Elliot: I was going to say somebody is asking that question. What happens if the logo I’ve created for my firm exists in other countries? Should I re-create a new one? Is it a case that whoever did it first? Is there a priority in that case?
Ludmila Yamalova: It’s a fairly complex exercise because it is not just a priority. It is also use. Priority would be who registered it first. It’s priority of use or registration, because they are two separate concepts. I started using the trademark, but I haven’t registered it. Somebody else across the world could have actually registered it and maybe using it a little later. There is the timing of the use itself and then the timing of registration, and then also the extent of the use, and also perhaps to an extent popularity of that product or service. It is possible to challenge one’s right to a trademark on that basis. Yes, I know you’ve had it registered and even used it to an extent, but I use it a lot more and therefore I should have some kind of priority or some kind of rights to it over yours. For example, my use of that particular trademark is a lot more in line with the trademark itself. You are using it, but you are using it for pastries, and I am using it for pharmaceutical products. Given the name, it is a lot more apt to use on pharmaceutical products than for pastries. Therefore, you can lose out on using the particular name because it is not as important to you as it is important to me, who is in pharmaceuticals.
Again, this is a fairly complex exercise. This is why you have courts and judges who go through these different tests and analyses in deciding which should take precedent or priority, if any, and if at some point it is possible, and it does often happen, then you end up having very similar trademarks in different countries, and they exist within the borders of the particular country and their international reach, if they want to enter that same market, they will ultimately have to use a different trademark for their product.
Tim Elliot: So, do your research really is the answer, isn’t it? Know your stuff. Let’s assume that Ludmila’s Legal Cupcakes is going to go ahead and we’re going to start this firm. Using the name Yamalova, we’ll probably expand into Pavlovas and all kinds of things at some point down the road. But we’ve got something original here. We have what we think is a trademarkable logo for the cupcakes, the scales of justice with two delightfully decorated cupcakes. Where do you start? We’re based here in the U.A.E., so I guess we start with trademarking here first. Is that right?
Ludmila Yamalova: Yes. You do need to start, to pick a place and start, particularly if you want to benefit from the Madrid Protocol, you need to start in the country that is a member to the Madrid Protocol. For example, if you want to register a trademark for a chain of pharmacies, or restaurants, Saudi Arabia is not a part of the Madrid Protocol, so if you register your original trademark in Saudi Arabia, and then you want to go and register that same trademark in the rest of the Gulf Cooperation Council (GCC) and maybe in Europe, then you will need to go country by country because Saudi Arabia, the originating state, the place where your original trademark was registered first, is not a member to the Madrid Protocol. In that case you would not be able to benefit.
For example, if registered the trademark in Saudi Arabia, and then they also registered in the U.A.E., they cannot really use the U.A.E. in that case because it is not the originating place of registration for the purposes of being able to benefit from the Madrid Protocol. You need to choose where it is you want, if you have a choice, if you’re going into a new business in several places at the same time, that is one consideration you may want to keep in mind. Using that specific example, you represent a chain of restaurants or coffee shops you want to go into and you want to invest in a trademark, a business coming from Saudi Arabia, but perhaps for the purposes of your intellectual property registration, you could start a hub in the U.A.E. versus Saudi Arabia because once you have registered your trademark through the U.A.E., you will be able to then benefit from the Madrid Protocol and become subject to the protection and enforcement of all the countries that are part of the Madrid Protocol. That is how you would do it.
The process, still, I have to tell you, it’s not simple to register a trademark. It takes time and it costs money. If you are registering a trademark in the U.A.E., you need to start with the authority that overlooks or receives trademark registration is the Ministry of Economy, and that is set out specifically in the new trademark law in terms of who the authority is. You need to apply basically through the Ministry of Economy. They have an online portal, so that’s is more convenient than it was in the past. Then you submit your application, and you need to pay the application fee which at present is 750 dirhams, that is $200 to submit.
Along with that, you need to submit documents, and by the way, in the U.A.E. one of the requirements for a trademark is also must be in Arabic. You cannot just have an English name only as a trademark. You will always have to have an Arabic component to it. That is spelled out in the new trademark law, and that is just where we are these days. You submit all the documents and then you let the authorities publish and it is publication for the rest of the country to comment to see if anybody wants to challenge your attempt to register your trademark. That obviously takes some time for the authorities to go through it to publish. Then the authorities can either accept it as is, can reject it, or they can request certain restrictions. For example, I will let you register this trademark, but this particular trademark cannot apply to a certain category of services. They can restrict your use of that trademark. Then you have 90 days with the opportunity to comment, and then they will publish it again. There is a back and forth with different amendments. Ultimately, if the application is accepted, then you need to also pay 5,000 dirhams for the actual registration.
The process is you first apply, then you wait for the authorities to comment, and they will either deny it or reject it flat out because maybe somebody already has the same trademark, or you can amend it, or you can restrict it, and it goes back and forth. Then they will publish it to see if there are any other challengers, and then they will decide on that. If there is an actual formal challenge, they may even actually go into a court case. But let’s say without all of those specific challenges, it still takes about a year for that trademark to be registered, and then you have to pay once it is actually registered. However, you can benefit from this waiting period. Later on, if your trademark is accepted and registered, and then there is some kind of a dispute about the priority of registration, the beginning of the application period will also be counted for and even later you can benefit from some limited protection during this waiting period, if ultimately your trademark is registered.
Some people say, oh my gosh, it’s so lengthy, but it is a lengthy process, and in other countries as well, it takes about a year to a year and a half from the time you apply to the time you actually have your trademark registered. By the way, once you have it registered in the U.A.E., then you can apply to the WIPO registry on the basis of the Madrid Protocol and have the trademark registered in other countries. First you need to register it in one country. You can go in parallel a little bit, but you still have to, more or less, have started the process in the originating country.
Tim Elliot: But it is still going to take time, clearly. You can operate your new business with your new logo in theory as normal. Ludmila’s Legal Cupcakes is a going concern, and hopefully we can trademark it within the next 12 months or so. What if somebody does copy the idea? What do you do? Where do you start? Do you start locally? Do you start international court cases out? What’s the first step to take if somebody has clearly infringed upon your trademark?
Ludmila Yamalova: It’s a great question. There are two parts to it. It depends on whether you have your trademark registered or not. You touched upon an interesting idea, which I think is important to further highlight, and that is, in order to operate or to use a trademark or a logo, legally you don’t need to register it at all. You can have Ludmila’s Legal Cupcakes. I can use it, and I don’t have to register it. I told you I really like that.
Tim Elliot: You are enjoying this.
Ludmila Yamalova: Yes. So am I. This is the beginning of something special, Tim. You don’t have to register a trademark. You register a trademark if you want to benefit from the protection. You can absolutely use Ludmila’s Legal Cupcakes or whatever else I want to use as my logo, as my design, as my message to the world, and I don’t have to register it. But when I may want to register it is if I am thinking others will start using my trademark that I worked so hard to create and give some meaning and put substance behind it and others will be using it and benefiting from my hard work, on the one hand, and on the other hand, stealing potentially either my clients or even worse, damaging my trademark because they could be providing the same sort of service or goods, pretending they are me, and since they are not me, their service might be inferior to mine, and that would negatively reflect on my reputation. That’s when I really want to register a trademark.
I am sure most businesses want to register trademarks, but as I said earlier, it does take time and money to do it, and like the example of Ludmila’s Legal Cupcakes, there are so many different words that I may have to register several trademarks to have the full benefit of that particular trademark. It could be Ludmila’s Legal Cupcakes, all these words together. It could be Ludmila’s Legal Cupcakes with pictures, like you said, the scales with cupcakes underneath, or it could be just the scales of justice with the cupcakes underneath, without the name, or it could be abbreviated names, and so on and so forth. To get the full benefit of it, off the top of my head I’m thinking easily of at least 10 different trademarks that could be registered in that one example. Now if you the 750 dirhams in the application fee and multiply that by 10, that is quite a bit of money just in applying for it. Then ultimately if you do have the benefit of it, you have to pay 5,000 dirhams or about $1,500 for each one of them for the registration. It is not an insignificant amount, and that is why a lot of businesses, as much as they may want to register their trademarks, they don’t because not only the cost, but also the work process that goes into registering trademarks.
But if you do apply and you do finally have a successful registration, especially in the U.A.E., then you are very well protected because there are different mechanisms that exist to enforce it rather immediately. One of the things, for example, you can just call the police because if you have a registered trademark, the police will just come and basically close down the shop that has your registered trademark or seize the goods that are using your trademarks. That is fairly easy to do. That is one of the greatest benefits in the U.A.E. in particular because the authorities here are very efficient in that way. Let’s say I have a registered trademark for Ludmila’s Legal Cupcakes, and I see a store that opened up somewhere across town and not only are they operating under that name, but they are also selling different goods and gadgets with that trademarked name, so by having the registered trademark, basically I will call the police. The police will not only close down the shop but also will seize all of the goods and ultimately destroy the goods. It’s very effective.
You can do it through the police or you can do it through what is called the order on petition, which is a civil remedy where you go through the court and you get issued a letter from the court saying please enforce this trademark. Through the court, you can ask for whatever it is you want. It is also possible that if I created and I bought a number of my own Ludmila’s Legal Cupcakes notebooks, for example, but somehow in the process, they ended up being taken over by somebody else or bought. I could even ask the order on petition that the court issues an order for the authorities to go and seize those items and give them back to me because I am the lawful owner of them. The order of petition is ultimately using the civil courts to give you the ability to make requests in terms of what you want to do with these trademarks. Do you want them destroyed? Do you want them returned? Do you want the shop to be closed? And so on and so forth. Then obviously, there could be criminal sanctions on the parties that infringe, and we can talk about that. Equally so, if you have an order on petition and something like this happens, you can also file a civil case for compensation, especially if your business has suffered as a result of somebody else trying to compete under your trademark.
Tim Elliot: There are levels of protection there, aren’t there? What kind of penalties may apply if somebody opens another branch of Ludmila’s Legal Cupcakes without your permission – or our permission – as we are partners.
Ludmila Yamalova: Wow! I see what’s happening here, Tim. I can see. You’ve been learning from these podcasts!
Yes, the penalties, it depends on the type of infringement, if you will, or violation. For example, if you’ve got forgery of a trademark or you used a forged trademark or possession of materials to forge trademarks, the penalties could range from 10,000 dirhams to 1 million dirhams. Yeah. It’s quite punitive, and that’s the idea because you want to deter people from the idea of benefitting from somebody else’s business success.
On the other hand, penalties regarding the sale of goods or services carrying an infringed trademark, or the unlawful use of a registered trademark, range from 50,000 to 100,000 dirhams. For example, if somebody is selling my products or services.
The first set of penalties refers more to forgery of trademarks, use of a forged trademark, or possession of technology, gadgets, or devices that allow you to forge trademarks. Those are the penalties that go up to 1 million.
But here, if somebody is using the sale of goods with infringed trademarks, or Tim, you devised your own Ludmila’s Legal Cupcakes notebooks. I know you are trying to claim the right to it, but remember they are called Ludmila’s, not Tim’s. In that particular case, the penalties are a little less, a higher starting point, but they are capped at 200,000 dirhams and ranging from 50,000 to 100,000 dirhams. If there is a repeated violation, then the penalties double. It is pretty significant. Monetarily they are significant for the party that is using the infringed trademark and also legally because not only will the products be seized, but also their businesses will be closed, and on top of that, they can also be fined, so this is like a tripled or a quadrupled penalty. They close down the shop or the business, they take away the goods, and they impose penalties as well, and these are penalties that do not come to me, but penalties that go to the authorities for you Tim, for infringing on my trademarks.
Tim Elliot: Oh man.
Ludmila Yamalova: Yes. An interesting system. If you have a registered trademark, ultimately in the U.A.E. in particular, it’s actually very effective.
Tim Elliot: I’m going to cite this recording as evidence that Ludmila’s Legal Cupcakes was first uttered by me. But we’re only in this for you. We haven’t even got the business yet.
Ludmila Yamalova: (Laughing).
Tim Elliot: This is not going to work, is it?
Ludmila Yamalova: Unless we do it together. Now we’re bound together.
Tim Elliot: There you are. If I missed anything, because what’s very clear here, is that if you register a trademark, it is expensive. It does take time. But there are very real tangible benefits, it seems to me.
Ludmila Yamalova: Absolutely. If you do have it, it’s extremely valuable. It’s extremely effective. Certainly, for businesses it is worthwhile to try to register. But especially as a startup business, we all know startup businesses have so many other expenses to consider before they even have a proven concept of a successful business model. It’s an understandable expense that they perhaps hold back on, but as your business becomes more successful and obviously as long as it also relies heavily on that trademark, because don’t forget, a lot of businesses don’t really care and don’t really need to have a strong trademark.
For example, if you make cupcakes, let’s call it Ludmila’s Cupcakes, and it is just me and my name because they are my cupcakes, I don’t necessarily need to create a logo. With Ludmila’s Cupcakes, I can have an Instagram account, and it’s linked to me, and I sell my cupcakes. By the way, a lot of businesses these days, operate that way, without even their own website, and they are very effective, and it is a lot more economically accessible to them. There it is. You don’t need to have a trademark, but as you become more successful, as you become more spread out, and as you invest more money into your business, as your name becomes more valuable, that’s when you want to perhaps make the investment and register.
Tim Elliot: That’s another episode of Lawgical, this time trademarks here in the U.A.E., lots to think about and to consider. As always, our legal expert, the Managing Partner here at Yamalova & Plewka, Ludmila Yamalova. Once again, a huge thank you.
Ludmila Yamalova: Thank you, Tim.
Tim Elliot: Find us at LYLAW on social media, Facebook, Instagram, TikTok, LinkedIn, live on those platforms at different times, recording the Lawgical podcast as well. There’s a huge every growing library of Lawgical podcasts, all kinds of legal matters here in the U.A.E., and they’re all free to listen to. If you’d like a legal question answered in a future episode of Lawgical or you’d like to talk to a qualified U.A.E. experienced legal professional, click the Contact button at LYLawyers.com.
