Critical Legal Issues Related to Trademarks and Ways to Avoid Them

The UAE brand owners are now required to be more vigilant about legal issues related to trademarks as the country has joined the Madrid Protocol on September 28th, 2021. It means the brand owners need to be aware of the local Trademark Laws of regions or countries where they wish to apply for international trademark registration as per the Madrid Protocol. You can consult with trademark agents in the UAE to avoid many legal issues.

Ignoring potential legal implications before filing an application can even endanger your base application/registration. You may incur heavy financial losses if your base registration/application is attacked in Designated Contracting Parties. Read the article below to have a glimpse of some of the critical legal issues related to trademarks and ways to avoid them.

Similarity to Designation of Origin and Geographical Indications

A trademark can pose legal issues if it is similar to a Designation of Origin mark or a geographical indication. The issue may arise at the time of filing the application or during commercial use after registration. As per the trademark laws of many countries, applicants are not allowed to register or use a trademark that is similar to a Designation of Origin mark. Regions such as the EU have strong laws on Protected Designation of Origin. Therefore, it is advisable to consult with trademark agents in the UAE before applying for registration.

Two Companies Using Similar Marks for the Same Products/Services

You may face legal issues if your trademark is similar or identical to the mark of another company. The trademarks may also fall within the same Trademark Classes (NICE Classification List) or may represent similar services. Two similar trademarks representing the same type of product constitute trademark infringement in the UAE and nearly all other jurisdictions.

For instance, a new company manufacturing and selling laptops under the brand name APPLE would lead consumers to believe that Apple Inc. is selling those laptops. Companies like Apple Inc. invest huge amounts of money on trademark watch services and they will find out quickly that your company has infringed their registered trademark. They can drag you into court, subjecting you to a lengthy trademark dispute. Apple Inc. may win the case if your mark is similar enough in sound, look, or meaning to that of the APPLE trademark.

Strength of the Plaintiff’s Mark

Sometimes the parties involved in a trademark dispute need not be direct competitors but their goods or services may be related. In such cases, the court may consider numerous other factors to judge the likelihood of confusion. The determining factors may include the strength of the trademark, closeness of the goods, the resemblance of the marks, proof of real confusion, the categories of goods/services, the defendant’s intent in choosing the allegedly infringing mark, and the possibility of product line growth.

If the other party’s brand name is too strong or famous, the verdict will be in favour of them. In such cases, the brand owners are advised to maintain a safe distance from well-known brand names and avoid mirroring them. Advice from trademark agents in the UAE may come in handy for brand owners to avoid conflict with strong brands.

Requirement of Continued Commercial Use

In general, the Madrid Protocol of international trademark registration doesn’t obligate the trademark owners to demonstrate the use of a trademark to ensure its continued validity. However, the requirement of commercial use is mandatory if you are registering a trademark in jurisdictions such as the US, Philippines and Cambodia. Failing to submit a declaration of continued use may give a chance for others to file a request for cancellation of your registered mark. Each of these countries has different deadlines and procedures to submit declarations of use or non-use. Trademark agents in the UAE can assist you with information on the procedures of each of these countries.

Tips to Avoid Legal Issues Related to Trademarks

Brand owners can follow various methods and procedures to avoid legal issues related to trademarks in relevant jurisdictions. Hiring experienced trademark agents in the UAE is a robust solution to avoid many of the issues discussed here. Additionally, practice the following tips to avoid potential legal issues:

Register your Marks as Per Relevant Laws

Study the trademark laws of your desired territories, and register the trademarks as per the standard procedures. Since understanding the local trademark laws of each region is practically tough for the brand owners, it is advisable to consult with trademark agents in the UAE.

Conduct a Trademark Clearance Search

It is essential to carry out a trademark search before filing the application. It will help you to avoid applying for a trademark that is confusingly similar to an already registered mark. In this way, you avoid infringing upon the IP rights of other trademark owners.

Carry out Trademark Watch

After registering your trademark in the UAE or any other relevant jurisdiction, you must monitor the market to check the existence of any confusingly similar marks. Availing of trademark watch services in the UAE will allow you to take timely action against infringing marks. Trademark agents in the UAE can monitor the market on your behalf.

Hire the Best Trademark Agents in the United Arab Emirates

Every brand owner must be aware of the legal issues surrounding the registration, use and maintenance of a trademark. To avoid any legal issue arising from trademarks, you can consult with the best trademark agents in the UAE such as Jitendra Intellectual Property (JIP). JIP can save the brand owners by offering services related to trademark registration, trademark search and trademark watch services. Our team of highly skilled trademark agents in the UAE can provide you with quick and cost-effective trademark solutions.

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