Rules and Considerations on Trademarks in UAE | Trademark registration
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Rules and Considerations on Trademarks in UAE

Experts that specialize in Dubai trademark registration provide clients with clear and simple tips and rules in order to guide them. Businesses and their employees have to be aware of the basic rules related to trademarks in order to ensure consistency. The consistent use of marks facilitates and strengthens the rights to them.

The following are the most important basic considerations for launching a brand in UAE:

Avoid marks that are descriptive terms or commonly used

Avoid using the terms in marks which are used widely in an industry, especially the one that you belong in. You might have to make disclaimers that you don’t possess rights to certain words.  Or you’ll only afford a scope of protection that’s narrow. Also, it is going to be extremely hard for you to conduct trademark monitoring in UAE for such kind of mark.

A lot of business and brand owners think that trademarks that describe the qualities, characteristics or purpose of services or products are strong trademarks. This is completely the opposite. As a matter of fact, a descriptive mark is weak and it is likely for authorities, such as the UAE Ministry of Economy, to refuse the registration of a descriptive mark unless it has developed another meaning or secondary meaning. This can only occur when consumers have already associated the mark to one source. It is possible; however, this takes a couple of years for a mark to develop a secondary meaning.

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Avoid marks with potential conflicts

Avoid using or selecting a trademark that gives you signs of conflict. A business owner rarely has a huge budget that reserved in competing with different business owners for the use of a mark. Litigation and competitive challenges are very costly and you would be better off using your funds in growing your business. Also, it is important for you to note that investors often stay clear of companies that will soon have to face litigation or conflicts from their trademarks.

File an application for UAE Trademark Registration prior to using a mark

There is no need for you to wait until you have used a mark in connection to your products or services before you file a UAE trademark registration with the Ministry of Economy as you will be able to file on the basis of intent-to-use. The intent, however, has to be bona fide. You have to use the mark in commerce before you will be issued by the authorities a registration certificate.

Trademark registration in UAE isn’t as simple as it sounds

Trademark applications, especially for registration, can look very simple and straightforward that you think you will be able to complete the process yourself. However, in reality, it is far from the truth as trademark processes can be quite technical. Incorrect responses also cause examining attorneys to reject applications. This is why it is best to hire a trademark specialist prior to submitting an application to the trademark office in the country.

Use marks as adjectives rather than verbs or nouns

The manner a mark in UAE is used will have an impact on the scope of protection which is provided with registration. A mark has to be utilized by a business as an adjective rather than a verb or noun. In general, the use of a trademark has to be followed by a common descriptive term(s) for products or services. For instance, consumers should say “kindly pass me the Colgate® toothpaste” rather than “kindly pass me the Colgate®.”

Read more: Top Ways to Protect and Enforce Your Trademark in UAE

Factors to consider in determining Trademark Infringement

When determining the likelihood of confusion with regards to whether an ordinary consumer would believe two goods or services come from a single source, there is a need to consider the following:

  • Marketing channels utilized
  • The similarity of conflicting trademarks (look, underlying meaning, and phonetic similarities)
  • Strength of registered or senior user’s trademark (fame of prior mark)
  • Degree of care that you think will exercised by consumers when buying goods or services
  • Evidence of the actual confusion
  • The intent of second comers when selecting a trademark
  • Nature and number of similar trademarks that are in use for similar products or services
  • Likelihood of product line expansion
  • Length of time and conditions under which there’s concurrent use with no proof of confusion amongst consumers
  • Market interface between the owner of the prior mark and new applicant
  • The extent to which an applicant has rights in excluding others from utilizing a trademark on similar products or services
  • Other established facts probative of the effect of usage

We know you have lots of questions regarding trademark and intellectual property rights in UAE. Contact our office today to book a consultation with the team of trademark specialists of Farahat & Co that are based in UAE. Our experts can address your needs and requirements related to trademark and its processes. Call now!

Shahnaz Kaushar is a senior Trademark and Intellectual Property (IP) attorney. A seasoned lawyer based in Dubai, she has handled some of the firm’s complex, high-profile cases – many involving the protection of trademark and IP rights. Read more