Tim Elliot
Welcome to Lawgical, the UAE’s first and only regular weekly legal podcast. My name’s Tim Elliot. Lawgical is recorded here at the Dubai-based legal firm, 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. Most of us have seen that little TM symbol appear next to a product or service, but the background of what it really means might not be familiar to many. Let’s start there, Ludmila. How do we define a trademark?
Ludmila Yamalova
A great start. A trademark, in general, is a type of intellectual property that consists of a recognizable sign, design, or expression identifying products or services from a particular source and distinguishing them from others.
The owner of a trademark can be an individual, a business, or another legal entity. In the UAE, under the UAE’s trademark law, a trademark can be a name, word, signature, drawing, packaging, or a combination of these elements. A critical emphasis is placed on distinctiveness—the trademark must be distinguishable from existing trademarks.
Interestingly, many trademarks we recognize today are compilations of multiple trademarks. For example, the trademark could be just the name, but you can also trademark the writing style, font, color, or logo attached to it. Each element could be a separate trademark, or they can be combined into one registration.
For simplicity, a trademark is a form of intellectual property. To break it down further, you have tangible property, like a pen or a cup, and intangible property, like ideas or proprietary concepts. Intellectual property becomes more valuable as it gains recognition, making its protection crucial.
Take ubiquitous examples like Coca-Cola or Nike. Their trademarks are essential because they define the product, service, and entire brand. If unprotected, anyone could misuse their logos, affecting their business and reputation. Protecting a trademark ensures legal recourse to enforce those rights.
Tim Elliot
It’s fascinating. I’m no marketer, but when I see a familiar logo, it immediately evokes trust. That’s why trademarks are so vital—it’s about emotional and visceral consumer connections, isn’t it?
Ludmila Yamalova
Absolutely. Protecting intellectual property benefits both businesses and consumers. For instance, seeing a Starbucks or McDonald’s logo abroad offers comfort and predictability for travelers. Businesses invest heavily in trademarks to ensure consistent quality and protection, which builds consumer trust.
Some companies even buy dormant trademarks of once-successful brands to revive them, leveraging the established recognition and value.
Tim Elliot
So, trademarks protect products or services, but they differ between countries. Two key systems are the Nice Classification and the Madrid Protocol. What are they?
Ludmila Yamalova
To understand these systems, let’s start with the UAE’s trademark framework.
The UAE has Federal Decree Law 36 of 2021, which replaced the previous trademark law and established new legislative guidelines for trademarks. Additionally, Cabinet Resolution 57 of 2022 clarified aspects of this law.
The UAE is also part of two key international systems:
- Nice Classification System: This standardizes trademark categories across member countries. For example, food products or pharmaceuticals fall into specific categories, streamlining registration across jurisdictions. The UAE adopted this system under Federal Decree Law 156 of 2021.
- Madrid Protocol: This allows trademark owners to protect their marks internationally by registering them through the World Intellectual Property Organization (WIPO). Once registered, the trademark can be extended to other member states. The UAE adopted this protocol via Federal Decree Law 67 of 2021.
These systems simplify international trademark registration, saving businesses time and costs.
Tim Elliot
Questions are pouring in from Facebook, TikTok, and Instagram. Let’s answer a couple. First, if I trademark my product in the U.S., does that apply here?
Ludmila Yamalova
Not automatically. You must register the trademark locally. However, through the Madrid Protocol, you can extend your U.S. trademark to the UAE and other member states by filing with WIPO.
Tim Elliot
What about this question: can you trademark a cake recipe?
Ludmila Yamalova
Not the recipe itself. Trademarks protect creative and visual elements like the name, logo, or packaging—not the ingredients or steps. Recipes are usually protected under copyright, and in rare cases, by patents if they involve unique chemical formulations.
For example, a Japanese sponge cake recipe was patented because of its scientific uniqueness. Otherwise, most recipes fall under copyright law.
Tim Elliot
Let’s say we open “Ludmila’s Legal Cupcake Store” with the tagline “Tastier than the law.” Would we trademark the tagline and logo, rather than the cupcake itself?
Ludmila Yamalova
Exactly. You’d trademark the name, tagline, and logo—like a gavel or scales of justice next to a cupcake. The recipe itself would be protected by copyright, not a trademark.
Tim Elliot
Here’s another interesting question: what are the possible grounds for rejecting a trademark application?
Ludmila Yamalova
There are many grounds. For instance:
- Generic Names: You can’t trademark common names or terms already in the public domain.
- Lack of Distinctiveness: The trademark must be unique and distinguishable.
- Misleading Names: A trademark cannot misrepresent the product or service.
- Public Property: Names of cities or countries cannot be trademarked.
For example, Madonna as a name isn’t unique, but Madonna as a singer is distinctive because of her brand and legacy, which justify trademark protection.
Tim Elliot
Can trademarks be issued on a geographic basis? For instance, can a trademark in Dubai also exist under a different owner in the U.S.?
Ludmila Yamalova
Yes, but it depends. Trademark rights are generally territorial, so you must register in each jurisdiction. International treaties like the Madrid Protocol facilitate this by allowing trademarks to be extended across member states. However, even under the Madrid Protocol, conflicts can arise if a similar trademark already exists in the target country.
Tim Elliot
So, do your research. Let’s say we proceed with “Ludmila’s Legal Cupcakes.” Where do we start?
Ludmila Yamalova
You’d start by registering in a Madrid Protocol member state, like the UAE. The process involves applying through the Ministry of Economy, submitting required documents, and paying fees. Once registered locally, you can extend the trademark internationally through WIPO.
Tim Elliot
What if someone infringes on your trademark?
Ludmila Yamalova
If your trademark is registered, you can file complaints with the police, pursue civil remedies like injunctions or compensation, or escalate to criminal penalties. Penalties for trademark violations in the UAE can range from AED 10,000 to AED 1 million, depending on the severity.
Tim Elliot
It’s clear that registering a trademark takes time and money, but the protections are invaluable.
Ludmila Yamalova
Absolutely. For startups, it’s understandable to delay registration, but as your business grows, trademarks become critical assets.
Tim Elliot
That wraps another episode of Lawgical, all about trademarks in the UAE. A huge thank you to Ludmila Yamalova, Managing Partner at Yamalova & Plewka.
Ludmila Yamalova
Thank you, Tim.
Tim Elliot
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