Drafting of Trademark Agreements
Drafting of Trademark Assignment Agreements in the UAE
A trademark assignment agreement is a basic document which states that a registered UAE trademark will pass from one owner to another. To make the trademark assignment valid in the UAE, it must be recorded with the Ministry of Economy (MoE).
A trademark can be assigned by its owner for some or all goods and services in accordance with the UAE Trademarks Law (Federal Decree Law No. 36 of 2021) and after the assignment, the new owner will have all the rights to use and protect the trademark in the UAE.
Our lawyers at HHS Lawyers can assist you with:
- Preparing your Trademark Assignment Agreement in a simple and legally compliant way, all in accordance with UAE trademark laws and Ministry of Economy regulations;
- Submitting the trademark transfer application to the UAE Ministry of Economy and registering your trademark assignment accordingly;
- Providing certified Arabic legal translation and notarization, necessary for trademark assignment in the UAE;
- Conducting a trademark search in order to ensure that the trademark is alive, registered and that there are no pending conflicts, before initiating the assignment process.
What is a Trademark Assignment Agreement?
A Trademark Assignment Agreement is essentially a simple legal contract assigning the ownership of a registered trademark within the UAE from an original owner (whether an individual or a company) to a new owner. It must be differentiated from a trademark license whereby a third party is given a license (i.e. Temporary right) to use the trademark while full ownership of the brand continues to remain with the original owner.
A trademark assignment must be in writing, and it must be registered with the UAE Ministry of Economy for the transfer to be effective against third parties. Otherwise, the original owner will be considered the owner in the eyes of the law.
Enquire NowKey Legal Requirements for UAE Trademark Assignments
In order to have the transfer of your trademark legally recognized in UAE, it should meet the following conditions under the latest rules of UAE:
- Written Agreement: The document must be a written one. Oral agreements relating to the transfer of trademarks are not acceptable.
- Notarization and Legalization: It must be executed before a Public Notary Public (or licensed private notaries) in UAE. However, if it is executed outside UAE, then the entire legalisation (attestation) of the document must be done up to the UAE Embassy in that country then by the Ministry of Foreign Affairs of UAE.
- Translation to Arabic: The agreement must be translated in Arabic through a professional translator duly certified by the Ministry of Justice in UAE, as Arabic is the official language.
- Registration: The transfer cannot be made against third parties until it has been registered in the Ministry of Economy’s Trademark Register and it has been published in the Official Trademark Bulletin.
Essential Sections in a Trademark Assignment Agreement
When we at HHS Lawyers prepare your Trademark Assignment Agreement we cover all relevant issues to avoid future issues and to ensure that a robust and compliant agreement in the UAE contains the following;
Parties’ identification:
Our firm accurately identifies the full names, addresses and legal description of both Assignor (original owner) and Assignee (new owner). So the UAE Ministry of Economy can authenticate the assignment from and to whom it proceeds.
Details of the Trademark:
We shall specify the registration number of the trademark, the trademark itself if applicable, and the exact classes of products or services within the NICE classification that are covered by the assignment for the specific UAE trademark registration.
Transfer of Goodwill:
In the UAE, assignment usually entails the transfer of “goodwill”. It consists of the business’s reputation, customers, and business value that is attached to the trademark. The new assignee thus derives the entire business value of the brand.
Consideration (Payment):
A trademark in the UAE can be assigned with or without consideration. Whether it is a gift, part of a company merger, or it involves a token price, the assignment deed must show “consideration”. This will enable the Ministry of Economy to properly record the assignment.
Warranties and Guarantees:
Assignor should provide warranty that:
He is the owner of the UAE registered trademark.
He has the legal right to assign it.
The new owner can enjoy the free ownership of the trademark.
The trademark has no disputes.
There is no pending litigation against the trademark.
No third parties are claiming rights in it.
The Step-by-Step Process of Trademark Assignment in UAE
Assignment of the trademark from one person to another in the UAE requires certain procedures which have to be performed so as to give the official recognition of the new owner of the trademark to the Ministry of Economy. These procedures in plain words are as under:
Prepare the agreement:
We can draft a custom Trademark Assignment Agreement in accordance with the needs of the business deal and within the scope of trademark laws of the UAE.
Notarize the agreement:
All parties involved sign the document in the presence of a Public Notary, which makes the documents legal.
Send it to the ministry:
The application of Transfer of Ownership is applied through the UAE Ministry of Economy smart portal.
Pay for the government fees:
Pay the required government fees.
Ministry Review:
The ministry checks the files and documents in accordance with the federal law No 36 of 2021.
Publication in the bulletin:
The transfer will be published in the UAE Trademark bulletin.
Get a new certificate:
The Ministry will issue a new trademark certificate showing the new owner’s name.
Why You Need a Professional for Drafting
Using an online trademark assignment template in the UAE is a bad idea. The Ministry of Economy has very strict requirements and an incorrectly worded, translated or formatted application will be rejected, resulting in delays, extra government fees and in some cases a need to start over.
At HHS Lawyers, we make sure your UAE Trademark Assignment Agreement is correct from the start:
- Accurate – The accuracy of the existing trademark status, ownership, and trademark registration particulars is checked and then confirmed to be aligned with the Ministry of Economy registers prior to drafting the agreement.
- Compliance – The agreement is drafted in accordance with Federal Decree Law No. 36 of 2021, Cabinet Decisions and all UAE trademark laws currently in force.
- Simple – The document is drafted in simple English making the terms easily understandable to you, while at the same time, we make sure that the Arabic version is legally binding for the purpose of being submitted to the relevant authorities in UAE.
Contact Trademark Expert Today
We know your intellectual property matters. You need local expertise for accurate legal protection. Whether you’re purchasing a new brand, or selling an existing brand, HHS Lawyers will help you to do so in a smooth, legal and safe manner. Contact us today and book an initial consultation for detailed information.
FAQ’s
What are the different types of trademarks that can be assigned with Trademark Assignment Agreements in UAE?
The assignor and assignee have to transfer trademarks and service marks through an agreement. The service mark or trademark can be registered or unregistered.
Explain the term warranty?
This term is for assurance which is made between one party and another to seek protection when every aspect of the assignment does not go as planned.
What is a trademark that is in the Madrid system?
The Madrid system facilitates the trademark registration in several different jurisdictions across the globe. This means the trademark is unique and enforceable in several different locations worldwide. If you want to know more about this, don’t hesitate to contact our trademark specialists.
