Trademarks can come in different kinds:

A word or a combination of words, letters, and numerals can perfectly constitute a trademark. However, trademarks may also consist of drawings, symbols, three-dimensional features such as the shape and packaging of goods, non-visible signs such as sounds or fragrances, or colour shades used as distinguishing features. The term of trademark registration can vary but is usually 10 years. It can be renewed indefinitely on payment of additional fees.

What is required to receive a trademark?

A trademark must make it possible to identify your company and its products or services. To register a trademark, two criteria have to be fulfilled:

• The trademark is intended to be used in commerce, i.e. it must be tied to and used to identify a company, product, or service.

• The trademark must be distinctive, i.e. easy to differentiate from everything else that is out there. If your intended trademark can be easily mistaken for another one already in use by somebody else for similar goods, you will not be able to claim it.

Trademarks are registered for certain goods and services with the relevant IP office, and once approved for fulfilling the above criteria, they are yours to use and defend. It is important to know that trademarks should be used commercially and publicly to retain their validity. If this was not the case in the past three or five years (based on the jurisdiction), their validity can be challenged by an opponent. It is up to the trademark owner to then prove the actual use.

Types of trademarks

Trademarks come in five main categories:

• Word marks, which protect a name or title without graphic elements.

• Figurative marks, which protect two-dimensional logos, words in a graphic design, shapes, and specific colours associated with those.

• 3D marks, which protect iconic three-dimensional product shapes. Famous examples are the Coca Cola® bottle or the Toblerone® chocolate bar. As opposed to a registered design, 3D trademarks theoretically have an indefinite lifetime. However, the hurdles for registration are quite high as a shape’s famousness needs to be demonstrated through evidence.

• Sound marks, which can be jingles or sounds that act as an identifier.

• Colour marks, which can be individual or a combination of colours associated to a particular brand.

• Word marks, which protect a name or title without graphic elements.

Furthermore, you can register three kinds of trademarks :

• Individual marks distinguish the goods and services of one particular company from those of another.

• Collective marks distinguish the goods and services of a group of companies or members of an association from those of competitors. Collective marks can be used to build consumer confidence in the products or services offered under the collective mark. They are often used to identify products that share a certain characteristic.

• Certification marks: If there are standards a product has to fulfill to be allowed to be sold, the manufacturer usually indicates the certificate more or less prominently – it is a sign of supervised quality and creates consumer trust.

UAE trademark law and international treaties:

According to the UAE Federal Decree Law No. 36 of 2021 on Trademarks, a trademark is any distinguished form of names, words, signatures, letters, figures, graphics, logos, titles, hallmarks, seals, pictures, patterns, announcements, packs, or any other marks or group of marks, if they were used or intended to be used either to distinguish goods, products, or services from whatever sources, or to indicate that certain services, goods, or products belong to the owner of the trademark, because of their provision, manufacturing, selection, or trading. The voice accompanying a trademark is considered a part of it.

The United Arab Emirates are a member state of the Madrid System for the International Registration of Marks that is governed by two treaties:

1. The Madrid Agreement, concluded in 1891 and revised at Brussels (1900), Washington (1911), The Hague (1925), London (1934), Nice (1957), and Stockholm (1967), and amended in 1979.

2. The Protocol relating to that Agreement and concluded in 1989, aiming to make the Madrid system more flexible and more compatible with the domestic legislation of certain countries or intergovernmental organisations that had not been able to accede to the Agreement.

The system makes it possible to protect a mark in many countries by obtaining an international registration that has effect in each of the designated Contracting Parties.

The Nice Agreement, concluded in 1957, revised in Stockholm in 1967 and in Geneva in 1977, and amended in 1979, establishes a classification of goods and services for the purposes of registering trademarks and service marks (the Nice Classification). The United Arab Emirates is a member state of the Agreement.

Why does trademark registration matter?

Trademarks enhance a brand’s standing. They can be used for marketing purposes, create customer loyalty, and thus enhance the value of your business. Being a property right, they also strengthen your position in the market by allowing you to defend yourselves against infringers and/or copycats. To do so properly, the trademark needs to become well known by being actively used for quite some time.

As such, it is thus not meaningful to apply for a trademark for each new product name, feature, or slogan. A product’s lifetime is often too short to build a branding. Although often lower than those of patents, the cumulated costs for obtaining trademark, including protection for availability searches, filing, prosecution, and maintenance, quickly add up. Thus, it is better to protect an entire product line, including new iterations, with a single trademark. A well-known example is the Galaxy line from Samsung, with only a new designation behind the word “Galaxy” each iteration.