BACT Consultation

Bait Aljouda Consultation and Training

Home Our Services Trademark Trademark Modification Trademark Ownership Transition

Trademark Ownership Transition in UAE

This service allows the customer to transfer ownership of a trademark – with all rights thereof – from one owner to another.

Trademark Assignment

In this type of trademark modification the owner of the trademark changes. The owner sells its trademark to a completely different owner. For example, Mary Tompson sells her trademark to OLY LLC. To properly protect each party’s rights, the parties should sign a Trademark Assignment Agreement and notify the UAE Trademark Office.

Trademark Ownership & Dispute as per Federal Decree-Law no. (36) of 2021

  • Whoever registers a Trademark shall be deemed its sole owner. The ownership of such Trademark may not be disputed when its registration and use are continuous for at least (5) years from the date of its registration without an action being lodged against it, unless it is proven that the person who registered it is mala fide.
  • The first person to use the Trademark registered in his name with the Ministry may request the Ministry to cancel this registration within (5) five years from the date of registration, unless he expressly or implicitly consents to the use of the Trademark by the person in whose name it is registered.

Assignment, Transfer of Ownership and Mortgage of the Trademark as per Federal Decree-Law no. (36) of 2021

  • The Trademark registration application may be assigned, and the ownership of the registered Trademark may be transferred, with or without consideration. Also, the Trademark may be mortgaged or attached with the commercial shop or exploitation project in which the Trademark is used to distinguish its goods or services unless otherwise agreed upon.
  • The Trademark ownership is transferred by inheritance, will, gift, or any other legal form.
  • In all cases, the transfer of the Trademark’s ownership, mortgage or attachment thereof shall not be enforceable against third parties unless it has been entered into the Register and announced by any means of publication, in accordance with the procedures and conditions specified in the Implementing Regulation of this Decree-Law.
  • The transfer of ownership of the commercial shop or the exploitation project includes the Trademarks
    registered in the name of the owner of the shop or the project, whenever they are closely related to the commercial
    shop or the exploitation project, unless otherwise agreed upon.
  • If the ownership of the commercial shop or the exploitation project is transferred without the Trademark itself,
    the transferor of ownership may continue to manufacture the same goods or provide the same services for which the
    Trademark was registered, or trade therein, unless otherwise agreed upon.

Right of Priority in Trademark Ownership

According to the Federal Decree-Law, no. (36) of 2021 on trademark registration in the UAE, any physical or juristic person has the right to register his/its trademark, in accordance with the provisions of this Decree-Law. As per the UAE trademark law, the owner of a trademark could be any individual who is a UAE national or a foreign national. The owner of the trademark can also be a registered company carrying out any business activity in the UAE.

In practice the owner of the trademark will depend on the nature of the business, its structure and the strategies and goals adopted by the business.

When a company is established, the trademark should be registered under the company name and it will be the owner of the trademark. A common mistake made is to appoint an executive of the company to file for a trademark in their own personal name.

In case of a group of affiliated companies using the same trademark, usually the owner of the trademark will be the group company (holding company), who would grant internal licenses to each of its affiliates to use the trademark.

In joint ventures, attention should be given to who owns the trademark that will be used by the joint venture. The Joint Venture Agreement should clearly state the rights of each party and what will happen to the trademark when the joint venture is dissolved.

For businesses owning the lines of intellectual property (“IP”), it may be reasonable to establish an IP holding company to become the owner of such assets.

Advantages of Owning a Trademark

  • The trademark is an valuable asset
  • The owner only can exploit the trademark through commercialization, license and assignment and can be used in business negotiations.
  • Only the legal owner of a trademark has standing to enforce the trademark rights and prevent any infringement upon the same.

The Expected Duration of Service Delivery

The expected duration of service delivery is 40 days.

Service Procedure

  • Filling application
  • Application study
  • Publishing

Fees

The expected duration of service delivery is 40 days.

Required Documents

Following documents are required to file the application of trademark ownership transition:

  • Transition requestor details: Transition requestor name, phone, email, nationality, legal nature.
  • Trademark details: Trademark name, Trademark name translation English/Arabic, Trademark type, Trademark class, mark description, class number, product explanation.
  • Document attachments: Trademark Registration Certificate Copy, Document Indicating The Ownership Transition and/or Modification, Trademark logo, , Passport Copy, complete home address, Power of Attorney (notarized by the Notary Public & legalized by the UAE), Priority documents if any.

Are you looking to modify your trademark ownership in the UAE? Our expert consultant can advise on the cost in UAE and assist you throughout the modification process. Drop us a line at [email protected] or give us a call at +97144470880 Alternatively, you can schedule a complimentary consultation with us at [email protected].

Need Help?

Contact us at the consulting office or feel free to submit a business inquiry online.

Make an Enquiry






    Free ConsultationAsk your question!