The UAE Courts have broad jurisdiction in amending or invalidating entries in UAE Register of Trademarks. The authorities can strike out any entry on the grounds a specific entry doesn't accurately define or express, as displayed, the existing rights and obligations of the registered trademark holder.
Proceedings can also be commenced with the application to the Ministry of Economy by the registered trademark holder or any person or legal entity who's interested. The application has to be made through the filing of a notice of motion or application for trademark cancellation in UAE.
When can I cancel or invalidate a trademark in UAE?
As per the Trademark Law in UAE, Federal Law (no 37) of 1992, including amendments in Federal Law (no 8) of 2002, any interested party can request for cancellation of trademark registration in UAE under the following grounds:
- Trademark wasn't registerable during date of registration
The Trademark Law in UAE lists the circumstances in which trademarks aren't registerable. The cancellation or expungement proceedings will be based on the non-registrable due to any of the following requirements:
- The mark consists of or nearly resembles to be likely mistaken as an official mark
- The mark has the tendency to be confused with another registered mark
- The mark is a name of a good or service in any language with which a mark is used
- The mark is clearly deceptively misdescriptive or descriptive of a quality or character, conditions of, place of origin or persons employed in producing goods and services in which the trademark is used
- The mark is merely the surname or name of an individual who's living at present or has died in the preceding thirty (30) years
- Trademark isn't distinctive
Cancellation proceedings for trademark registration in UAE may be started on the grounds that the trademark isn't distinctive. The uniqueness or distinctiveness of a trademark refers to the capability of a trademark in functioning as a source indicator i.e. the ability in distinguishing goods and services of the registered owner from trademarks of others.
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In order to be unique or distinctive, the mark has to meet the following conditions:
- The mark and all goods and services are associated
- Owner of the mark has to use the association in selling and/or manufacturing goods and services
- The association must enable owner of a mark in distinguishing goods and services from marks of others
While required for the trademark registration in UAE, the distinctiveness or uniqueness can be eliminated or lost over time. This, for instance, can occur wherein third parties utilize the mark and the owner hasn't taken action enforcing the rights.
- Trademark was abandoned
Proceedings for trademark cancellation in Dubai UAE may be commenced if the registered owner of a mark abandoned its use. The abandonment has to comply these two requirements:
- Non-use of a registered trademark in UAE
- Intent to abandon the registered mark in UAE
An intent in abandoning a mark can be inferred from failure in using a mark for a certain period of time.
- Applicant for trademark registration isn't entitled
Cancellation of a trademark's registration can be due to applicant being not entitled in securing the registration in UAE. If, during the date of first usage of a mark or during filing date of trademark registration in UAE,
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The trademark of a registered owner was confusing with:
- A trademark which has been used previously in UAE or made known within UAE by another entity or person
- A trademark in which the application for trademark registration was filed previously in UAE by another entity or person
- A trademark which had been used in UAE previously by another entity or person
Then, the owner won't be the person who's entitled in securing the trademark registration. The UAE Trademark Law limits availability of cancellation proceedings based on the non-entitlement - just the person who used a confusing trademark previously can seek cancellation for a registered trademark for non-entitlement.
The party seeking cancellation or revocation of trademark rights has to establish a mark hasn't been abandoned with the confusing trademark during the date of trademark registration advertisement and application.
For proceedings that are commenced five years following mark's registration was issued, the cancellation based on trademark non-entitlement will be available. But, only if the trademark's registered holder or owner adopted the mark in UAE with knowledge regarding previous use or knowing the other party has a confusing trademark.
- Trademark application was submitted in bad faith
This is a brand-new ground for invalidity that was added by UAE Trademark Law amendments. It can take quite some time prior to local authorities deciding on a case with such ground considered. The local Courts will invalidate trademark registrations that are found to have fraudulent misrepresentations and/or material misstatements which are made during the registration process.
To know more about trademark cancellation in Dubai, UAE, call us here in Farahat & Co today!