Cancellation of Registered Trademarks in the UAE Due to Non-Use
The UAE offers protection to brands in the form of trademarks and the brand owners invest their time and resources to safeguard their marks from potential infringements. The businesses with a clear-cut brand strategy would conduct adequate trademark searches with the help of trademark agents to ensure they do not infringe on the rights of other trademark owners. However, apart from such concerns of infringements, the registered trademarks in the UAE are also vulnerable to cancellation due to non-use. The Trademark Law (Federal Law No. 37/1992) and its amendments by Federal Law No. 8/2002 of “Trademark Law”, gives third parties the right to request for the cancellation of trademarks that has not been actively used in 5 consecutive years since its registration.
Cancellation Request From the Third Parties for Non-Active Trademarks
After register their trademarks, the new applicants may face opposition from prior users during 30 days designated as the opposition period. The detail of the new trademarks will be published in the local official gazette. Other trademark users could challenge the new trademark applications citing confusing similarity with their existing trademarks.
One of the most common ways the new applicants defend this opposition is by arguing that the trademarks are not similar. However, another way of defence is by questioning the usage of the existing pre-registered trademarks. In such cases, the owners of the pre-registered trademarks would be asked to prove whether they have fulfilled the conditions of the trademark usage. The new applicants can request the cancellation of trademarks that are not in usage for 5 consecutive years. The owners of the existing trademarks are allowed to produce evidence of the usage of the trademarks.
Reasons for the Existence of Trademarks Not in Use
Not all the oppositions raised to the new applications are likely to be legitimate. Thousands of trademarks are being registered every day in the UAE Trademark Office. However, many of them would not be active. Some right holders may register their trademarks without the intention of legitimately using the trademarks. Such trademark owners are the main contributors to the upsurge in the number of dormant trademarks in the UAE Trademarks Office. However, the right holders won’t hesitate to challenge new trademark applications even if their existing trademarks have not been in use. The new applicants, with the help of trademark agents or attorneys, can conduct investigations to check whether the existing right holders are vulnerable to cancellation order over non-use.
Evidence to Prove the UAE Registered Trademarks Are in Use
If a new trademark applicant request for cancellation of an already existing trademark citing lack of usage, then the legitimate trademark right holders will be forced to provide evidence of usage. The following can be used as evidence,
- Marketing expenditures
- Actual direct sales
- Signed agreements to appoint third parties for a jurisdiction
- Advertisement expenses
- Details of imports and exports for goods
Preparing evidence in the case of cancellation requests needs good effort on the part of the trademark owners. Legitimate right holders are often willing to invest time and money to prepare such evidence to enforce their rights in the face of challenges. An experienced trademark agent comes in handy for the trademark owners in presenting sufficient proof for the usage of the registered trademarks. Such preparations would save the companies from the expenses of the non-use cancellation proceedings 5 years after registering the trademarks.
Requirements for UAE Trademark Owners to Defend Against Claims of Non-Use
The trademark owners need to satisfy certain conditions to defend against the claims of non-use cancellation. The conditions are:
- The use of a trademark should adhere to the trade license
- The trademark should be in use within the UAE including free zones and mainland
- The use of the trademark should be in line with the goods or services identified by the registration
- The trademark should be used by the trademark owner or an entity or person appointed by the owner in accordance with the Trademark Law
Seek Help From Trademark Agents in UAE
To avoid trademark opposition and non-use cancellation orders, it is advisable for the brand owners to invest in the services of the best trademark agents in Dubai, UAE. The best trademark agents can conduct proper trademark searches to clear any opposition after the trademark filing. Jitendra Intellectual Property (JIP) is a full-service intellectual property service provider in Dubai, UAE with years of experience in assisting brand owners with trademark registration and protection. JIP’s highly qualified trademark agents can represent the rights holders in any legal matters and disputes over trademark cancellation requests. JIP can help clients with building sufficient proof to defend against any trademark opposition. JIP is committed to ensuring that the trademark rights of the clients remain protected in the UAE and other GCC countries.