n April 2019, the United Arab Emirates (UAE) reversed its previous ban on the sale of E-Cigarettes, vaping devices and e-liquids, allowing these products to be legally used, sold and distributed under strict legal and regulatory requirements. The lifting of the ban and the popularity of E-Cigarettes and Vapes as an alternative to traditional smoking has led to a significant increase in Vape shops, startups and related businesses opening in the UAE. According to statista.com, the revenue from the E-Cigarette market in the UAE is projected to reach US$68.5million in 2024 and grow annually at a rate of 7.28% for the next 5 years.
Vapes, E-Cigarettes (E-Cigs), ‘Heat-not-Burn’, and other electronic alternatives to smoking have taken over the market in recent years. In addition to the legal and regulatory requirements, each of these products contain a wide variety of protectable Intellectual Property (IP) which includes Patents, Designs, Trade Marks, Copyrights, Trade Secrets and Confidential Information.
Businesses operating in this ever-evolving smoking alternatives sector are advised to actively protect their IP and monitor the market for infringements and misuse of their IP, which may adversely affect their brand value, reputation, and commercialisation ability. This is even more essential with the rapid evolution and integration of new and advanced technologies into E-Cigarettes and Vapes.
We discuss the different types of IP associated with E-Cigarettes and Vapes below.
Innovation – Patents
The defining characteristics of these devices is the absence of burning tobacco in conventional cigarettes to release the Nicotine. Entrepreneurs, inventors, and other creatives endeavoured to develop a system where Nicotine could be liberated from tobacco without the burning process. In the development of such alternatives, two systems have emerged – “Heat-not-Burn” and Vapor.
Heat-not-Burn are electronic cigarettes (commonly known as E-cigarettes or E-Cigs), which heat the tobacco in a controlled manner to liberate the Nicotine without burning the leaves. In terms of innovation, and invention, devices had to be created which could regulate the heat of coils to ensure the ‘burning’ threshold is never reached. Electronics, heating coils, microchips and of course a power source and power regulation all had to be specifically designed for such use, and it all had to fit into a handheld device. Various patents and inventions arose, and continue to be developed, in the creation of these products.
Vaping on the other hand, is a different process. Nicotine is extracted from tobacco and combined in solution with flavours and other compounds, to create the liquid, which is turned to vapour in the Vaping process. Devices such as atomizers, or sonication devices, are used to create the vapour which is inhaled by the user. The liquid (or E-liquid) is either contained in a replaceable ‘cartridge’ or ‘pod’, which is compatible with the Vape, or form part of the Vape device – in instances of disposable Vapes. Again, multiple inventions and devices had to be developed and created to facilitate these processes in such small handheld objects.
These Vaping devices have since evolved to include rebuildable atomizers and tanks for advanced users who want more control over their vaping experience. These devices include Rebuildable Dripping Atomisers (RDA), which use rebuildable coils and require a constant topping up of e-liquid, Rebuildable Dripping Tank Atomisers (RDTA), which is a device that heats the e-liquid and create tailor-made vapour, and Squonk mods, which is a bottom-feeder mod that feeds e-liquid directly into the atomizer.
The integration of advanced technologies has added to the evolution of the E-Cigarette many of which now come equipped with features such as wireless and Bluetooth connectivity, touchscreens, mobile application integration, data analysis and monitoring, and adjustable designs. The next generation of E-Cigarettes may incorporate IoT integration, AI-Powered technology, and sustainable features.
The increase in these new devices and technologies have manufacturers flocking to register their various inventions and patents with the Patent Office at the UAE Ministry of Economy, and in other jurisdictions. To curb Counterfeiting, they are finding innovative ways to protect their products such as ensuring only certified or authorised cartridges/pods (E-liquids) will function with their corresponding devices.
Brand Recognition – Trade Marks
An important aspect of the bouquet of intellectual property is creating a distinctive brand for the E-Cigarettes, Vapes, and related products and services.
Trade marks include a variety of ways in which to promote and protect the Brand, these include; the name of the product, any logos or graphic elements associated with the product, the colour scheme of the product, any slogans or catchphrases associated with the product, and they can even protect the 3D shape of the device. Further, the trade marks, just like the designs and patents, can also be applied to consumables (i.e., tobacco in the case of Heat-not-Burn, and cartridges/pods in the case of vapes). The name, shape, colour, flavour name, flavour colour, of each consumable, may all be eligible for trade mark protection subject to its registrability assessment.
Coming up with the right trade mark involves being creative and considering the company’s mission and story. The best trade marks are usually the ones that are unique, non-descriptive of the products, memorable, and easy to search online. Using trendy new words related to E-Cigarettes and Vapes in the brand name is one way to make it memorable and may help the products appeal to a target market. But with all things, trends come and go. The chosen brand name needs to withstand the test of time and should not lose its distinctiveness over a short period of time.
Similarly, with patents above, the increase in the number of new E-Cigarette and Vape brands has resulted in the increase of trade mark registrations for these products. Once the prospective trade mark has been chosen, it is important to conduct clearance searches to check if the trade mark as well as the domain name and social media handles are available for use and registration to mitigate the risks of a potential infringement lawsuit. Once cleared, it is important to register the trade mark as soon as possible with the Trade Mark Office at the UAE Ministry of Economy.
Aesthetic – Designs
On top of having the perfect name and functionality, the device must look good too. This is where design registrations come in. The appearance and shape of the device is important, especially in such a competitive field. More recently designs have deviated from cylindrical cigarette ‘copies’ and have taken on new shapes.
Rectangular and square devices are becoming more common and such variations are used as ways to differentiate devices from one another. Not only the shape of the device, but the shape of the mouthpiece is also important, and may also be subject to a design registration – provided of course that the shape of the mouthpiece is not dictated by the function which the object is set to achieve. Such ‘functional’ designs are not permitted under Designs laws.
Literary and Artistic value – Copyrights
Unlike most other forms of intellectual property, Copyrights do not necessarily require a registration to take place although it is possible and recommended. Copyrights protect the rights of an Author when creating a written work such as a novel or poem, lectures or seminars, and musical pieces created by the Author or performed by others. Copyrights also protect photographs, illustrations, and computer programs – all of which are relevant to the Vape industry.
As part of a Brand campaign for a product, different forms of Artwork or Photos may be used to display the product to potential users. The right to prevent others from copying your brand and your promotions are useful tools when launching or maintaining a product on the market. Additionally, as most of these products require some form of electronic technology, such as microchips to regulate the temperature control, or to activate sonication devices, or to actuate the atomizers, the programs or algorithms behind these electronic devices can also be protected with Copyrights.
Trade secrets – Confidential Information
In any product, invention or creation, there is always some information which you prefer not to share with the rest of the world. This may include formulas or recipes, or customer lists and marketing and business methods. Although keeping such information secret may be your intention, the law requires that internal policies exist around such information that you wish to keep secret.
This includes, limiting the number of persons who are privy to the information, and how the information is shared internally. The idea is that a company must be able to show that the information they are claiming to be secret or confidential, was treated as such. Additional safeguards such as Non-Disclosure Agreements or Confidentiality Clauses built into employment contracts should also be considered.
For more information, please contact:
Sau Lin Wan, Bird & Bird
saulin.wan@twobirds.com
