Federal Decree by Law No. (36) of 2021 Concerning Trademarks

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We Khalifa bin Zayed Al-Nahyan, President of the United Arab Emirates,

• Having reviewed The Constitution;
• Federal Law No. (1) of 1972, on the Competences of Ministries and the Powers of the Ministers, as amended;
• Federal Law No. (5) of 1985, Enacting the Civil Code, as amended;
• Federal Law No.(11) of 1992, Enacting the Law of Civil Procedure, as amended;
• Federal Law No. (35) of 1992, Enacting the Code of Criminal Procedure, as amended;
• Federal Law No. (37) of 1992, on Trademarks, as amended;
• Federal Law No. (18) of 1993, Enacting the Commercial Code, as amended;
• Federal Law No. (1) of 2006, on Electronic Transactions and Commerce, as amended;
• Federal Law No.(19) of 2016, on Combating Commercial Fraud;
• Federal Law No (67) of 2021, on the UAE Accession to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, as amended;
• Federal Decree-Law No. (31) of 2021, Enacting the Penal Code, as amended; and
• Federal Decree-Law No.(32) of 2021, on Commercial Companies; and
• Based on the Proposal of the Minister of Economy and the Cabinet’s approval thereof,

Hereby enact the following Decree-Law:

Chapter One: Definitions and General Provisions

Article (1)

For the purpose of applying the provisions of the present Decree-Law, the following words and expressions shall denote the meanings assigned thereto respectively, unless the context requires otherwise:

Article (2)

Every object that has a distinctive form, including names, words, signatures, letters, symbols, figures, addresses, stamps, drawings, photos, inscriptions, packaging, figurative elements, shapes, color, set of colors or a combination of such elements, or a sign or a set of signs, including 3D marks, hologram marks or any other mark used or intended to be used to distinguish the commodities or services of a particular organization from the commodities or services of any other organizations, to indicate that a particular service is performed, or to conduct monitoring or inspection of the commodities or services, shall constitute a trademark. Objects related to sound and smell may also be classified as a trademark.

Article (3)

The following objects may neither be deemed a trademark or part thereof nor be registered as a trademark:

1. A mark that is lacking any distinctive feature or made up of details that are merely the designation commonly given to commodities and services, familiar drawings or normal images of commodities and services.
2. Expressions, drawings or marks offending public morals or the public order.
3. Public logos, flags, military rank insignias, badges of honour, national and foreign accolades, coins, banknotes and any other symbols related to the State or other States or Arab or foreign organizations or an institution thereof or any imitation of any of them.
4. Symbols of the Red Crescent or the Red Cross and other similar symbols and the signs imitating the same.
5. Marks identical or similar to symbols of a religious nature.
6. Geographical names and details if the use thereof would likely cause a confusion as to the source or origin of the underlying commodities or services.
7. A third party’s name, surname, photo, logo or nickname, unless he or his heirs approve the use thereof in advance.
8. Details related to honors or scientific degrees whose registration applicant fails to prove that he is legally entitled thereto.
9. Marks that would mislead the public or that include false information about the origin or source of commodities or services or their other features, as well as marks that contain a tradename owned by third parties.
10. Marks owned by natural or legal persons who are prohibited to be dealt with under the legislation in force in the State.
11. A trademark identical or similar to any other trademark that had been lodged or registered by third party for the same commodities or services or for related commodities or services, if the use of the trademark whose registration is applied for would give rise to an impression of a connection between them and other commodities or services of the registered trademark’s owner or would affect the latter’s interests.
12. The trademark of some commodities or services whose registration would undermine some commodities or services with an already registered trademark;
13. The trademarks that involve copying, imitation, translation, Arabization, or vocal translation of a third party’s famous trademark or part thereof, and which are intended to be used for distinguishing commodities or services identical or similar to those distinguished by the famous trademark;
14. The trademarks that involve copying, imitation, translation, Arabization, or vocal translation of a third party’s famous trademark or an essential part, and which are intended to be used for distinguishing commodities or services that are not identical or similar to those distinguished by the famous trademark, if such usage would likely indicate a connection between those commodities and services and the famous trademark, and it would be likely, in the event of registration of such a trademark, that such registration could inflict damage upon the interests of the owner of the famous trademark;
15. The trademarks that include the following expressions or phrases: “franchise, franchised, registered, registered drawing , copyright” or any other similar words or expressions; Any 3D trademark consisting of a shape resulting from the nature of the commodities specified in the registration application or required for achieving a technical result, where there are no particular elements that differentiate such shape from other shapes.

Article (4)

1. The famous trademark, whose reputation goes beyond the geographical boundary of the State in which it has been registered and extends to the other Countries, may only be registered for identical commodities or services if an application to this effect is submitted by the owner of such a trademark or if the latter’s consent is provided.
2. In order to determine whether the trademark is famous or not, the extent to which the public concerned is aware of such trademark as a result of its promotion, period or registration or usage, the number of countries in which this trademark has been registered or has become famous, or its value or effect on the promotion of the commodities or services distinguished by the famous trademark, shall be taken into consideration;
3. The famous trademarks may not be registered to distinguish commodities or services not identical or similar to those which are distinguished by such trademarks in the following two cases:
   • A. If the use of the trademark indicates a linkage between the commodities or services required to be distinguished and the commodities and services of the owner of the famous trademark; or
   • B. If the use of the trademark would inflict damage upon the interests of the owner of the famous trademark;

Chapter Two: Trademark Registration and Deregistration

Article (5)

A register shall be created at the Ministry, to be known as the “Trademark Register”, in which all the trademarks and their owners’ names, addresses, type of business activities, descriptions of the commodities and services covered by the trademarks, any changes, assignment, transfer, pledge, license of use or any other modifications involving the trademarks, shall be recorded in the Register. Any person may apply to obtain a copy of the data set out in the register against the prescribed fees.

Article (6): The Right to Register the Trademark

Any natural or legal person shall be entitled to have the trademark thereof registered in accordance with the provisions hereunder.

Article (7) Trademark Registration Application

The application for trademark registration shall be submitted to the Ministry in accordance with the conditions, controls and procedures specified in the Executive Regulations of this Decree Law.

Article (8) Registration of Trademark for More than One Category

1. A single application may be submitted for the registration of a trademark under one or more categories of commodities or services, in accordance with the Executive Regulations hereof;
2. The commodities or services shall not be deemed similar to one another just because they are listed under the same category, while the commodities or services shall not be deemed different from one another just because they are listed under different categories of the same classification determined by the Ministry.

Article (9) Registration of a Set of Identical Trademarks

A single application may be submitted for the registration of a set of trademarks that are identical in their essential elements and whose differences are limited only to matters not essentially affecting their particularity, such as the color or the data of the commodities or services related thereto, provided that such commodities or services are listed under the same category.

Article (10) Registration of A Single Trademark by Two or More Persons

If two or more persons apply simultaneously for registration of the same trademark or similar or nearly identical trademarks under one category of commodities or services, their applications shall be suspended until either of the disputants gives up the trademark in favour of the other party or a final judgment is rendered by the competent court on the dispute.

Article (11) Priority Right to Apply for Trademark Registration

If the trademark applicant or the successors thereof in title are wishing to have the priority right to apply for registration of the trademark based on a former application filed in a Member State of Paris Convention on Industrial Property, a multilateral international convention to which the State or any Gulf Cooperation Council State is a party or a bilateral agreement to which the State is a party, the applicant shall be required to attach with the application a copy of the former application and a statement indicating the former application’s date and number and the State in which it has been submitted, within a 6-month period of the date of the registration application on which the priority right depends. Otherwise, the applicant’s right to claim registration priority shall be extinguishe.

Article (12) Trademark Registration Controls and Procedures

1. The Ministry may establish the restrictions and amendments required to determine the trademark and to prevent its confusion with any other previously registered trademark or any trademark whose registration has been previously applied for;
2. Should the applicant fail to reply to the Ministry within a 30-day time limit running from the date of being notified of the restrictions or amendments set by the Ministry to determine the trademark and to prevent its confusing with any other trademark, the applicant shall be deemed as having waived the application thereof.
3. The Ministry shall decide on the registration application within a 90-day time limit of the date of the submission thereof, subject to meeting the conditions set out in this Decree Law and the Executive Regulations hereof.
4. Should the Ministry refuse to register the trademark for any reason, or render the registration contingent upon certain restrictions or amendments, it shall notify the applicant or his delegated person in writing of the reasons for its decision, and this notification may be served electronically.
5. The Executive regulations hereof shall determine the other procedures and controls for the registration of trademarks.

Article (13) Grievance Against the Rejection or Suspension of Registration

1. The registration applicant or the trademark owner or his authorized representative may submit to the Grievance Committee a grievance against the Ministry’s decision to dismiss or suspend the registration application, within 30 days of the date of receiving the dismissal notice. Further, the applicant may appeal against the Grievance Committee’s resolution before the competent court within 30 days of the date of being notified of such resolution.
2. If the registration applicant fails to appeal against the resolution dismissing the application thereof within the time limit set out in the preceding clause or fails to implement the condition upon which the application is contingent within the time limit set out in clause (1) of this article, the applicant shall be deemed as waiving the application.
3. In all cases, the court shall not admit the case seeking revocation of the Ministry decision to dismiss the application for registration or suspending the trademark registration if no grievance has been filed against the same.

Article (14) Grievance Committee

1. A committee called “Trademark Grievance Committee” shall be established at the Ministry under the chairmanship of a competent judge to be nominated by the Minister of Justice, and shall have two experienced members to be appointed by the Minister. This Committee shall be competent to hear the grievances filed by the interested parties against the decisions issued by the Ministry in enforcement of provisions of this Decree-Law and its Executive Regulations and the decisions issued in implementation hereof.
2. The minister shall issue a decision nominating the members of the Trademark Grievance Committee and determining its terms of reference and the procedures for filing the grievances with it.

Article (15) Trademark Announcement

1. Should the Ministry approve the trademark, it shall, prior registering it, announce the trademark on the Ministry’s Bulletin at the expenses of the registration applicant, in accordance with the procedure set out in the Executive Regulations of this Decree Law. The announcement shall indicate the deadline for filing any objection to the trademark registration.
2. Each interested party may, within 30 days of the date of publication, to submit an objection to the Ministry against the registration of the trademark in accordance with the procedures and means enshrined in the Executive Regulations hereof.

Article (16) Procedures for Deciding on the Objections Submitted to the Ministry

The Executive Regulations of the present Decree-Law shall define the procedures to be applied by the Ministry for deciding on the objections submitted to it.

The provisions on the grievances and appeal set out in Article (13) hereof shall apply to the Ministry’s decision to reject the objection.

A grievance or appeal against the decision to reject the objection shall not result in suspending the procedures for registering the trademark, unless the competent court decides to suspend the implementation of the decision issued to register the trademark under consideration in the objection.

Article (17) Trademark Registration Certificate

1. If the trademark be registered, the legal effect of its registration shall commence of the date of submitting the application. The owner of the trademark shall be given a certificate including the following information:
   • a. The registration number of the trademark.
   • b. Number and date of priority as well as the name of the State in which the application has been submitted, if any.
   • c. Date of submission of the application, date of registration of the trademark and expiry date of the protection.
   • d. The trademark owner’s name, surname, place of residence and nationality.
   • e. A certified copy of the mark.
   • f. Details of the goods or services for which the trademark is allocated, and the trademark’s category.
2. The owner of a registered trademark shall enjoy the right to prevent any third party, who fails to obtain his consent, from using the trademark or an identical or similar mark thereof, including any geographical indication in trading for distinguishing goods or services connected to those for which the trademark has been registered, whenever such use is likely to create confusion in the minds of the consumers in case the same or similar trademark is used to distinguish goods or services similar to those for which the trademark has been registered.

Article (18) Ownership and Disputed Ownership of Trademark

1. Whoever registers a trademark shall be considered its owner. Ownership of a trademark may not be a matter of dispute whenever it is registered and used for an uninterrupted period of at least five (5) years without being involved in any legal proceedings, unless it is proven that the person who registered the trademark has acted in bad faith.
2. Any person, who has used the trademark earlier than the one in whose name the trademark is registered with the ministry, may apply to the Ministry to have the trademark deregistered within (5) five years of the date of its registration, unless he expressly or implicitly agrees that the trademark be used by the one in whose name it has been registered.

Article (19) Amendment in the Register

1. The owner of a previously registered trademark may, at any time, apply to the Ministry to introduce any addition or modification to the form of the trademark, goods or services without fundamentally affecting the particularity of the trademark. The Ministry shall decide on such application in accordance with the procedures specified by the Executive Regulations of this Decree-Law.
2. The provisions on grievance and appeal set out in Article (13) hereof shall apply to the Ministry’s decision to reject the addition or modification.

Article (20) Trademark’s Protection Period and its Extension

1. The Ministry may, either sua sponte or upon the request of the person concerned, add to the register any information that has been omitted, remove or amend any information unduly recorded therein or falsely stated.
2. The provisions on grievances and appeal set out in Article (13) hereof shall apply to the Ministry’s decision to modify the register or remove any items therefrom.

Article (21): Trademark’s Protection Period and its Extension

1. The duration of protection resulting from the registration of a trademark shall be (10) ten years commencing from the date of submitting the application. If the right holder wishes to renew the protection for similar periods, he shall submit for renewal of the trademark registration to the Ministry during the periods, conditions and procedures specified by the Executive Regulations of this Decree-Law.
2. The trademark shall be renewed without any new examination. Such renewal shall be announced in the Ministry’s bulletin.

Article (22) Registration Renewal Application Procedures and Fees

1. The Executive Regulations of this Decree-Law shall determine the period of time during which the trademark owner is required to submit an application for renewal of the protection period to the Ministry, and shall describe the procedures and fees for such renewal.
2. If the period specified by the Executive Regulations of this Decree-Law for renewal of the protection period lapses without a renewal application being submitted by the trademark owner, the trademark shall be deemed removed from the register as of the expiry date of the protection period.

Article (23) Temporary Protection for Trademark on the Goods and Services Displayed in Exhibitions

Trademarks placed on goods displayed or used on services provided at official or officially recognized international exhibitions organized inside the country, during the period of their display, shall enjoy temporary protection if they meet the conditions for trademark registration and the rules and procedures for granting the temporary protection specified by the Executive Regulations of this Decree-Law.

Article (24) Trademark Deregistration

1. The owner of the trademark may apply to the Ministry in order to have the trademark removed from the register, for all or part of the goods or services for which the trademark has been registered.
2. The owner of a well-known trademark, whose reputation exceeds the geographical borders of the country and which is similar to a trademark registered with the Ministry, may apply to the Ministry to have the registered trademark deregistered within (5) five years of the date of its registration, unless it is proven that there is bad faith on the part of the person who has registered the trademark.
3. The interested person may apply to the Ministry to have the trademark that has not been used for (5) five consecutive years deregistered, unless there are emergency circumstances that have prevented the trademark from being used.
4. The Ministry may, either sua sponte or upon a request from the parties concerned, deregister the trademark that has been registered in violation of the provisions of this Decree-Law, or in the cases specified by its Executive Regulations.
5. If the trademark is licensed to be used in accordance with a contract that has been registered or annotated in the trademark register, the Ministry may deregister such trademark at the request of its owner, unless the contract stipulates the consent of the beneficiary on the deregistration, without prejudice to Article (31) hereof.
6. The Executive Regulations of this Decree-Law shall determine the conditions, terms, and procedures for submitting the applications referred to in this Article, and the mechanism for deciding thereon.
7. The provisions on grievances and appeals set out in Article (13) hereof shall apply to the Ministry’s decision to deregister the trademark or reject the deregistration application.

Article (25) Announcement of Deregistration and Renewal of the Trademark

The deregistration or renewal of the trademark shall be announced both in the Ministry’s bulletin and by any publication method specified by the Executive Regulations of this Decree-Law.

Article (26) Amendments of the Register

Based upon an application from the person concerned, the competent court shall order that any information be added to the Register if the same has been omitted to be recorded therein, or that any data unduly recorded therein or falsely stated be removed or amended. The Ministry may perform such an action sua sponte.

Article (27) Trademark Re-registration

If a Trademark is removed from the Register, it may only be re-registered in the name of a third party for the same or similar goods or services except after the lapse of three (3) years of the date of its deregistration, unless the deregistration has been made based on a judgment of the competent court and that the judgment specifies a shorter period for re-registration of the trademark.

Chapter Three: Assignment, Transfer and Pledge of Trademarks

Article (28)

1. The trademark registration application may be assigned, and the ownership of the registered trademark may be transferred, with or without compensation, pledged or attached together with the commercial premises or venture establishment or the whose goods or services are distinguished by the Trademark, unless otherwise agreed.
2. The ownership of the trademark shall be transferred by way of inheritance, will, gift, or any other legal form.
3. In all cases, the transfer, pledge or attachment of the trademark shall have legal effect vis-à-vis third parties only after the same is recorded in the register and announced to the public by any publication method, in accordance with the procedures and conditions specified by the Executive Regulations of this Decree-Law.

Article (29)

1. The transfer of ownership of the commercial premises or venture shall include the trademark registered in the name of the owner of the premises or venture, whenever they are closely related to the commercial premises or venture, unless otherwise agreed.
2. If the ownership of the commercial premises or venture is transferred without the trademark, the transferor may continue to manufacture or trade in the same goods or provide the same services for which the trademark has been registered, unless otherwise agreed.

Chapter Four: Agreements Licensing the Use of Trademarks

Article (30)

1. The owner of trademark may use the trademark himself, and may grant to one or several natural or legal persons a license to use the Trademark for all or part of the goods or services in respect of which the trademark is registered, unless otherwise agreed, and in accordance with the procedures and controls stipulated in the Executive Regulations of this Decree-Law.
2. The duration of the license to use the trademark shall not be longer than the period prescribed for its protection in accordance with the provisions hereof.

Article (31) Conditions of the Agreements Licensing the Use of Trademarks

The agreement licensing the use of the trademark shall be drafted in writing and duly notarized, and it shall not be required to be annotated or recorded in the register. The Executive Regulations of this Decree-Law shall specify the controls of the annotation or recording in the register if any of the parties concerned so request.

Article (32) Removal of Registered License from the Register

The registered license shall be removed from the register based upon the request of the trademark owner, the licensee or their legal representative, upon submitting evidence of termination or rescission of the license agreement. The Ministry shall notify the other party of the license deregistration application. Such party may object to the deregistration application, in accordance with the procedures and conditions prescribed in the Executive Regulations of this Decree-Law.

Article (33) Limitations on the License to Use the Trademark

Limitations may not be imposed on the beneficiary of the license to use the trademark, where such limitations are not originating from the rights conferred by the registration of the trademark or are not necessary for the maintenance of such rights. Nevertheless, the license agreement may contain the following limitations:

1. Delimitation of the geographical area or the duration of using the Trademark.
2. Requirements for effective quality control of goods or services.
3. The obligations imposed on the licensee to refrain from any actions that may result in abuse of the trademark.

Article (34)

A beneficiary of the license to use the trademark may not assign the license to third parties or grant sub-licenses, unless otherwise agreed with the owner of the trademark.

Chapter Five: Collective, Control, Public Benefit Organizations and Professional Organizations Trademarks

Article (35) Collective Trademarks

1. The Executive Regulation of this Decree-Law shall define the conditions and controls for registering and using the collective trademarks.
2. A collective trademark may not be re-registered for the benefit of third parties in the event that it is deregistered in respect of the identical or similar goods or services.
3. The Ministry may, upon the request of the person concerned, deregister a collective trademark if it is convinced that the registered owner is using it alone, that he is using it or allowing it to be used in violation of the conditions specified by the Executive Regulations of this Decree-Law, or that he is using it in a way that is likely to mislead the public in respect of the origin of the goods or any common characteristic of the goods or services for which the collective trademark has been registered.

Article (36) Registration of the Trademark for the Purposes of Control or Inspection

1. The legal persons undertaking the control or inspection of certain goods or services as to their origin, components, manufacturing process, quality, particularity or any other characteristics, may apply to the Ministry to register a trademark belonging to them to serve as an indication of conducting the control and inspection process, in accordance with the conditions and controls specified by the Executive Regulations of this Decree-Law. In all cases, the owner of the registered trademark shall notify the Ministry of any changes in such requirements.
2. The registration of such trademark shall have all the effects stipulated herein. In case the said trademark is deregistered or not renewed, it may not be re-registered in respect of identical or similar goods or services.

Article (37) Registration of the Trademark for Non-Commercial Purposes

1. A trademark may be registered for non-commercial purposes, such as the logos used by associations of public interest or used by professional organizations to distinguish their services or as badges for their members, in accordance with the conditions and controls specified by the Executive Regulations of this Decree-Law.
2. The registration of such trademark shall have all the effects stipulated herein, In case the said trademark is deregistered or not renewed, it may not be re-registered in respect of identical or similar goods or services.

Chapter Six: Geographical Indications

Article (38) Types of Geographical Indications

The registration of the geographical indications as a trademark shall conform to the provisions of this Decree-Law and its Executive Regulations. A geographical indication may be a sign or a group of signs in any form whatsoever, such as words, including geographical or personal names, letters, numbers, holographic elements, color or colors.

Article (39) Prohibitions

It shall be prohibited for every natural or legal person to carry out the following:

1. To use any means for naming or displaying any commodity in a way that suggests that its geographical origin is not the true one, in a manner that misleads the public about this origin.
2. To use a geographical indication in a way that is considered unfair competition in accordance with the Paris Convention for the Protection of Industrial Property or in accordance with the international laws and agreements in force in the country.

Article (40) Protection of the Geographical Indications

Geographical indications shall enjoy the protection stipulated herein as long as these indications are protected in the country of origin.

Article (41)

All geographical indications with similar names shall enjoy the protection stipulated herein, provided that their producers are treated fairly and that their consumers are not misled.

Article (42) Geographical Indications Register

The Ministry shall create a record, to be known as “the Register of Geographical Indications”, in which the geographical indications whose registration has been decided to be accepted, all the data related to them, and the actions taken thereon, are recorded in accordance with the provisions hereof.

Article (43) Cases of Non-Registration of the Geographical Indication

The geographical indication shall not enjoy the protection prescribed for a trademark, and it may not be registered in any of the following cases:

1. If the geographical indication is most likely to cause confusion with a trademark that is involved in a pending registration application submitted in good faith.
2. If the geographical indication is most likely to cause confusion with an already existing trademark for which rights has been acquired by being used, bona fide, in the State.
3. If the registration of a geographical indication as a trademark is not permissible pursuant to provisions hereof.

Article (44) Provisions Applicability to the Geographical Indications

Without prejudice to the provisions of the bilateral and international agreements applicable in the State, the provisions on the trademarks stipulated in this Decree-Law and its Executive Regulations shall apply to the geographical indications pertaining the following:

1. Submission of a registration application.
2. Examination of the registration application and approval or rejection of the application.
3. Objection to registration.
4. Registration Revocation and Deregistration.
5. Transfer, licensed use and attachment of the geographical indication.
6. Compensation for any act of infringement on the rights prescribed in the provisions hereof.

Chapter Seven: Customs Clearance

Article (45)

1. Subject to the legislations in force in the State, the customs authorities may, either sua sponte or based upon a request of the right holder or his representative, order, under a reasoned decision, to suspend customs release for a maximum period of twenty days of any materials in violation of the provisions hereof.
2. The customs authorities may not prevent the right holder or his representative from examining the materials ordered not to be released by customs.
3. The Executive Regulations of this Decree-Law shall specify the conditions, controls, and procedures related to the inspection and the submission of a request to suspend the customs release and decide thereon.

Article (46) Exceptions

The provisions of Article (45) hereof shall not cover the following:

1. Small quantities of non-commercial goods that are included in the personal baggage of travellers or are sent in small packages.
2. The goods offered for trading in the markets of the exporting country by the owner of the right to the trademark or with his consent.

Article (47) Precautionary Measures Upon Infringement of Rights

1. In the event of an actual or potential infringement of any of the rights established under the provisions hereof, the right holder may apply for a writ on petition from the judge of summary matters at the civil court having jurisdiction over the origin of the dispute, to take one or more appropriate precautionary measures, including the following:
   • a. Conduct a detailed description of the infringement, the goods involved in such infringement, and the materials, tools and equipment used or that may be used.
   • b. Impose attachment over the materials, tools and equipment referred to in the previous paragraph of this Item, and the proceeds resulting from the infringement.
   • c. Prevent the goods, subject matter of the infringement, from entering the commercial channels and preventing their export, including the imported goods after their customs release.
   • d. Preserve any evidence related to the subject matter of the infringement.
2. The judge of summary matters may instruct the petitioner to submit his evidence that suggests that the infringement of the right has already occurred or is about to occur, and may instruct him to provide information that is sufficient to implement the precautionary measure and to identify the relevant goods.
3. The judge of summary matters shall decide on the petition not later than (10) ten days of the date of its submission, with the exception of exceptional cases that he deems appropriate.
4. The judge of summary matters may, when necessary, issue the order, at the request of the petitioner, without summoning the other party, if it is likely that the delay in issuing the order may cause irreparable harm to the plaintiff or if there is a fear that the evidence will be lost or destroyed. In this case, the other party shall be notified of the order without delay and immediately after its issuance. The notification, when necessary, may be made immediately after the order is executed.
5. If the judge of summary matters orders a precautionary measure to be taken without summoning the other party, the defendant may, after being notified of it, file a grievance against it before the president of the court in which the order was issued within (15) fifteen days from the date of his notification. In this case, the court president may confirm, modify or cancel such order.
6. The judge of summary matters may instruct the petitioner to provide an appropriate financial guarantee or a bank guarantee sufficient to protect the defendant from abuse of the right, taking into account that the amount of the guarantee or the bank guarantee shall be reasonable and appropriate.
7. The owner of the right shall have the right to file a lawsuit on the origin of the dispute within (20) twenty days of the date of the issuance of the order to take the precautionary measure, or from the date of his notification of the rejection of the grievance stipulated in Item (5) of this Article, as the case may be, otherwise this order will be cancelled at the request of the defendant.

Article (48) Claim for Compensation

The owner of the trademark may, if he sustains harm resulting from the infringement of any of his rights established under the provisions hereof, file a lawsuit with the Civil Court to claim compensation in accordance with the general rules.

Chapter Eight: Penalties

Article (49)

Without prejudice to any more severe penalty stipulated in any other law, a penalty of imprisonment and/ or a fine of not less than (100,000) one hundred thousand dirhams and not more than (1,000,000) one million dirhams shall be imposed on any person who commits any of the following acts:

1. Counterfeits a trademark that has been registered in accordance with the provisions hereof, or imitates it in a way that misleads the public, whether with regard to the goods or services characterized by the original trademark or those similar to it.
2. Knowingly uses a counterfeited or imitated trademark for commercial purposes.
3. Affixing, in bad faith, on his goods or using in his services a trademark belonging to others.
4. Possesses tools or materials with the intention of using them in imitating or counterfeiting registered or well-known trademarks.
5. Knowingly imports or exporting goods bearing a counterfeited or imitated trademark.

Article (50)

Without prejudice to any more severe penalty stipulated in any other law, a penalty of imprisonment not exceeding one year and/ or a fine of not less than (50,000) fifty thousand dirhams and not more than (200,000) two hundred thousand dirhams shall be imposed on any person who:

1. Knowingly sells, offers for sale or trading, or possesses goods for sale purposes, or offers services bearing a counterfeited or imitated trademark or unrightfully affixed or used.
2. Uses an unregistered trademark in the cases stipulated in Article (3) hereof, without any right, on his papers, commercial documents, goods or services, which leads to the belief that the trademark is registered.

Article (51)

In case of recidivism, whoever perpetrates any of the crimes provided in Articles (49) and (50) hereof shall be punished with a penalty not exceeding twice the maximum penalty prescribed for the crime. The Court may order the closure of the establishment and the confiscation of the tools, machines or materials involved in the crime.

Article (52)

The court may publish the judgment of conviction at the expenses of the convict.

Chapter Nine: Final Provisions

Article (53)

1. The trademark registered in accordance with the provisions of the laws, decisions and regulations in force prior to the effective date of the provisions hereof shall remain valid and shall enjoy the protection prescribed herein.
2. The provisions of this Decree-Law shall apply to the pending trademark registration applications submitted prior to the effective date of its provisions, provided that such applications are amended in accordance with the provisions hereof.

Article (54) Electronic System for Trademark Registration

1. The ministry shall establish an electronic system and an electronic database to be made available to the public, for trademark registration and renewal, and for completing the procedures necessary for the same.
2. The Ministry shall make the aforementioned electronic data available to the competent local authorities.

Article (55) Supervision and Oversight

The Ministry shall supervise and oversee the implementation of the provisions of this Decree-Law, and shall seize the crimes and violations that occur in violation of its provisions. A decision of the cabinet may, upon the proposal of the Minister, delegate such tasks or any of them to any of the competent local authorities.

Article (56) Judicial Officers

The employees of the Ministry or the employees of the local authorities, who are designated by a decision of the Minister of Justice, in agreement with the Minister or the head of the local judicial authority, shall have the capacity of Judicial officer for seizing the violations of the provisions of this Decree-Law or its Executive Regulations, within the scope of their respective areas of competence.

Article (57) Fees

The Cabinet shall issue a decision determining the fees necessary to implement the provisions of this Decree-Law.

Article (58) The Executive Regulations

The Cabinet shall issue, upon the proposal of the Minister, the Executive Regulations of this Decree-Law.

Article (59) Implementing Decisions

The Minister shall issue the necessary decisions to implement the provisions of this Decree-Law.

Article (60) Repeals

1. Federal Law No. (37) of 1992 on Trademarks, as Amended shall be repealed.
2. Any provision contradicting or repugnant to the provisions hereof shall be repealed.
3. The decisions and regulations established before the entry into force of the provisions hereof shall remain in force, provided that they do not contradict the provisions hereof, until their replacement is issued in accordance of the provisions hereof.

Article (61) Publication and Entry into Force

This Decree-Law shall be published in the Official Gazette, and shall enter into force as of the 2nd of January, 2022.