In the competitive market of the UAE, business entrepreneurs may protect their trademarks by way of registration. When a company name is trademarked, it distinguishes itself from its competitors' services and goods. It is, nevertheless, also vital to ensure that the mark you have is legally genuine. Since each trademark has a specific time of validity, it is necessary to renew them. Renewal of a trademark isn't something that happens very often. It is, nevertheless, one of the most crucial actions a company can undertake to ensure that its intellectual property is secured.
It does need a significant investment of time and resources to ensure that a company's trademark is protected from its competitors. The success of a brand strategy is dependent on the crucial procedure of trademark registration in the UAE and timely renewal, and ignoring the value of trademarks has a negative influence on any business's growth. Failure to renew trademarks in the UAE on time exposes companies to cases of trademark infringement. Are you still confused about how to do it or why trademarks renewal is so important? Then you are on the right platform. This article aims to discuss all the relevant aspects relating to trademark renewal in UAE.
Why is Trademark renewal necessary?
As per Article 19 of UAE Federal Law No. 37 of 1992 on Trademarks (hereinafter "UAE Trademark Law"), trademark registration is only valid for ten years. In addition, if you wish to have a legally enforceable trademark, you must renew it. The trademark renewal guarantees that all trademark rights must be continued for another ten years. If the owner fails to renew his or her trademark before the validity period expires, the trademark will become invalid. As a result, the owner will be without the trademark registration's protection. After the renewal of the trademark, the trademark owner receives a certificate of renewal.
How to know about the trademark expiry?
According to Article 19 of UAE Trademark Law, the Ministry of UAE shall inform the trademark owner by writing to his registered address within a month after the expiry date of the trademark registration.
How to apply for Trademark renewal in UAE?
Following are the requirements for the filing of Trademark renewal in UAE:
- Filing of trademark renewal Application
Trade mark owner who wishes to renew its trademark must apply within the last year of trademark protection. Any goods or services on the list of goods or services for which the mark is registered cannot be changed, deleted, or added to when seeking renewal of the mark registration.
- Examination of Application
Trademark Office will consider the application for renewal of trademark in the UAE after receiving it. If the application is verified to have been filed as per the rules and regulations, the office will formally authorize the renewal. The renewal of trademark registration in Dubai, United Arab Emirates, will be announced in the official gazette and two Arabic newspapers.
- Opposition period
The opposition procedure is not relevant in the UAE when a trademark is renewed. However, an identical publishing procedure is followed. Other parties are not authorized to oppose the trademark renewal in the UAE.
- Certificate of Trademark Renewal
Following the announcement of trademark renewal, there is a 30-day waiting period. When this period expires, the Trade Mark Office will issue a renewal certificate, which acts as proof of trademark registration renewal. The trademark renewal in the UAE is valid for additional ten years from the day the prior trademark protection period expired.
- Grace period for trademark renewal
Following the expiration of the registered trademark's protection period, the right holder can renew the trademark registration. After the protection term has expired, you have three months to file a renewal application. Although it is preferable to continue the mark six months before the expiration date, the Trade Mark Office may authorize late renewal for up to three months after the expiration date, subject to additional fees.
What is the cost for Trademark Renewal in UAE?
Due to the economic uncertainties created by the COVID-19 epidemic, the UAE Ministry of Economy has significantly decreased the renewal fees. Previously, brand owners had to pay official renewal fees of AED 8700, which has been reduced to AED 6500 (USD 1,820).
What are the documents required for Trademark renewal?
Following two documents are required at the time of trademark renewal:
- Copy of the old trademark registration certificate
- Power of attorney
When is a trademark considered to have lapsed?
If the trademark is not renewed within the specified period, i.e., during the grace period of three months, the registrant will lose its trademark protection. The UAE Ministry of Economy will automatically withdraw the trademark from the registry. The applicable regulation states that a mark that has been "deleted" from the Register cannot be "re-registered" by a third party within three years after the deletion date. Only the brand owner can apply for the re-registration during this period. Other parties can apply for the same trademark after the expiry of three years.
The purpose of this article is to provide a general overview of the subject. You can seek professional advice on your specific situation.
Our trademark and IP experts at Farahat & co. assist trademark owners in registering and renewing the trademarks on time, hence strengthening protection by ensuring that all legal requirements are completed. Please do not hesitate to contact us; we would be pleased to assist you.
