A business should be aware of the trademark rules and regulations to stay competent in the UAE’s business world. Competitors may try to misuse your trademark by filing similar or identical marks. Bad faith registration is a key scenario where competitors register a mark with no intention of using it, and to prevent others from using the mark. Businesses should take action against registrations which are made in bad faith, and for that, they can seek the guidance of trademark professionals in the UAE. Trademark monitoring is necessary to find out bad faith registration. Businesses should be aware of the publications in the official gazette, and they should also check the online platforms to identify bad-faith registrations.
What is bad-faith registration, and how could it affect the trademark?
When someone registers a mark with the dishonest intention to deceive, mislead, or benefit from the reputation of another mark. For instance, if someone registers a mark which is confusingly similar to an existing mark without any intention of using it, but to benefit from the reputation of the mark and to restrict the trademark owner from using their own mark. UAE trademark law addresses bad faith registration. Businesses or individuals can challenge a mark which is registered in bad faith. According to Article 18 of the UAE trademark law, a trademark registration can be cancelled if it is filed in bad faith.
There are several instances of bad-faith registration, such as
Filing a trademark to block competitors
If a business registers a mark to prevent competitors from filing it without any intention of using the mark, it is considered bad-faith registration.
Filing for a trademark which is already registered
If an individual or entity applies for a trademark knowing that it is already registered, then it is a bad-faith registration.
To prevent the cancellation of the mark
If the trademark owner fails to use the mark in commerce for five years, it will lead to the cancellation of the mark. To prevent the cancellation, the trademark owner registers a similar mark, which constitutes bad faith registration.
To achieve a monopoly in the market
Sometimes, trademark owners may register similar variations of their mark without any intention of using it, thus preventing others from using it.
How to handle bad faith registration in the UAE?
UAE trademark law allows individuals or other parties to initiate the cancellation of the trademark. An entity or other parties can initiate the cancellation action in the event of bad faith registration. You can initiate the cancellation action with the UAE Ministry of Economy.
To cancel the trademark
Businesses can file with the MOE to cancel the trademark. Ensure that you provide sufficient evidence of your trademark rights and their use in commerce. Also, you need to establish that the trademark registered in bad faith is confusingly similar to yours. Businesses should prove that the applicant has registered the mark with no intention of using it. You can demonstrate the dishonest intention of the applicant, such as registering a similar mark to benefit from the reputation or to block the use of the mark.
To cancel domain names
To handle the misuse of domain names, the UAE utilises the Uniform Domain Name Dispute Resolution Policy (UDRP), which is resolved through services such as WIPO. To initiate the cancellation of the domain name, you need to prove that the domain name is confusingly similar or identical to your mark. The applicant has no intent to use the mark, and the domain name is being used and was registered in bad faith.
Bad faith registration can prevent fair competition and can erode the goodwill and reputation of the existing trademarks. Trademark owners should gather relevant evidence to support their claim, like proof of ownership and evidence to prove the bad-faith action. Proving a bad faith registration is a complex process, and businesses can seek the guidance of IP service providers in the UAE.
How can Jitendra Intellectual Property secure the integrity of your brand?
Regular monitoring is necessary to find out the misuse of the trademark. To identify instances of bad faith filing, like domain name squatting, cybersquatting, and unauthorised use of the mark, trademark monitoring is necessary. Jitendra Intellectual Property can help businesses with trademark monitoring and enforcement in the UAE. Our trademark professionals will analyse the publications in the official gazette and online platforms such as e-commerce sites, domain names, and social media platforms
