A Five-point Checklist to Oppose an Infringing Trademark in the UAE
A trademark opposition is a vital aspect of the process of trademark registration in the UAE where any interested party is allowed to oppose a trademark application once it is published in the Official Gazette. Trademark agents in Dubai, UAE scrutinise the Official Gazette every month and will alert you if the proposed trademark is confusingly similar to yours. If no one opposes, the trademark will usually go on to be registered.
The presence of a confusingly similar trademark in the market will create brand confusion inflicting severe damage to your product’s reputation. Filing a timely trademark opposition in the UAE prevents other parties from harming your brand’s reputation. However, you need to ensure that you have sufficient grounds to oppose the trademark in question. What follows here is a five-point checklist that will help you oppose a confusingly similar trademark:
1. Don’t Miss the Deadline to File a Trademark Opposition
Once a trademark is accepted for registration, the UAE Trademark Office will publish it in the Official Gazette for 30 days. This lock-in period is termed the Opposition Period, and you can file the opposition within this time. If the trademark registrar deems your application to be valid, the opponent’s trademark application will be rejected. The key point here is that you should file the application before the opposition period expires. Consult with trademark agents in Dubai to ensure that you are well-prepared to move the opposition claim.
2. Assess How Similar the Trademark Is To Yours
Before filing an opposition application with the UAE Trademark Office, you need to ensure that your claim is valid. You can enlist the assistance of trademark agents in Dubai to assess the opponent’s trademark. Together, the trademark agents and the trademark owner can assess the conflicting mark on the basis of the following questions:
a. Is the mark similar to yours?
b. Is the opponent’s mark registered under goods and services (NICE Classification) similar to yours? To what extent?
c. Do you and the opponent share identical channels of trade?
d. Will the goods in question be marketed to the same consumers as yours?
If you think the answer to any of these questions is in the affirmative, your decision to oppose the trademark application will turn out to be right. Go ahead to oppose the application filed for trademark registration in the UAE.
3. Are you Eligible to Oppose a Trademark?
You are allowed to oppose a proposed trademark, only if you have a legitimate stake in its outcome. In many countries, including in the UAE, this means you need to have an already registered trademark to raise an objection. If you have a registered trademark that is confusingly similar to the opponent’s mark, proof of registration will usually be adequate to claim an opposition. Brand owners with unregistered trademarks should first perform trademark registration in the UAE to file an opposition. Having a registered trademark proves your legitimate claim that the registration of the confusingly similar trademark will somehow harm you, your brand, and/or your business directly.
4. Do you have a budget to move ahead with Opposition?
Just like all other trademark services in the UAE, trademark opposition also comes at a cost. A trademark opposition is generally inexpensive; however, the cost may escalate if the process goes on. There are chances that it turns into a brand dispute and either party drag the issue to a competent court. In such cases, it may take years to arrive at a final solution costing you big. Therefore, you need to ensure the availability of sufficient resources and a budget before venturing to fight an infringer. However, if you fail to file an opposition, the damages will cost you more than what you have to spend on objecting to an infringing trademark.
5. Do you want to settle the trademark opposition case?
Big brands often adopt a cut-throat attitude when it comes to opposing a confusingly similar trademark. They won’t mind dragging the opponent to court as they have the time, resources and budget to do that. They do this because their brand is big and the losses will be huge. However, if you can consider reaching an amicable settlement if the other party is ready to abide by your terms and conditions. You can agree to a settlement if the other party is ready to amend the application or registration to exclude certain goods.
You can ask the other party to limit the underlying goods and services, or propose to refrain from using the mark with certain other words. By choosing to settle the trademark opposition case, both parties can save a lot of time and money, while still protecting the brand. However, an agreement to accommodate a confusingly similar trademark will also weaken the strength of your trademark to some extent. Seek the advice of the top trademark agents in Dubai to decide which method of resolution is good for your brand.
How Can Jitendra Intellectual Property Help You?
The majority of trademark opposition cases are resolved early on through settlements for which you need the assistance of trademark agents in Dubai such as Jitendra Intellectual Property (JIP). Opposition cases can be very complex and full of potential pitfalls, but JIP can assist you throughout the process. For instance, we provide robust trademark watching services in Dubai which will alert you when a conflicting application is filed with the Trademark Office.
Every month, JIP’s trademark agents in the UAE scrutinise the official Gazette and review every trademark to see if it is similar to the registered trademarks of our clients. JIP then alerts the clients on time and assists them in filing the opposition. JIP’s other services include trademark registration, trademark search, trademark watch, and product registration.