Filing a Trademark in the Wrong Class: A Cardinal Sin That Brands Must Avoid
Filing in the wrong classes is one of the most common errors that brand owners commit while registering a trademark in the UAE. It’s a cardinal sin at par with the mistake of failing to file under multiple classes. Filing the trademarks under wrong classes may further delay the process of trademarks registration in the UAE. Trouble happens when your trademark application is rejected, and a similar brand name is registered in the same class. Your efforts to re-file the application may backfire as a similar brand name may exist in the class that applies to your product or services.
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We will illustrate the situation with a particular situation where a trademark application was rejected. The issue involves a small business that applied a trademark, its brand name, in Dubai. The application got rejected as they chose the wrong trademark class as well as included the name emirates name “Dubai” in the trademark. Let’s delve deep into the issue here.
First Mistake: Filing in Class 42 instead of Class 30
A small business that makes and sells fresh juices wanted to file a trademark registration in the UAE for its brand name ‘Juicy Lounge Dubai’ (Name changed for confidentiality). Normally, the business should file the brand name under Class 30, which is designated for Class 30. NICE International Classification designates Class 30 for different types of food and beverages.
However, the particular business registered their trademark in wrong Class 42. Class 42 is for Science and Technology. The product is not related to Science and Technology, and the company is not offering any services related to Science and Technology. The reason for the wrong filing may be due to ignorance of the NICE International Classification. A consultation with the best trademark agents in Dubai would have prevented this unforeseen situation.
Second Mistake: Brand Name with Geographical Name
The brand stopped any chance of redemption by trying to trademark the brand name with a suffix “Dubai”. As per UAE Trademark Laws, trademarks with names of cities or countries are not eligible for registration. After examining the application, the UAE trademark office rejected the proposed trademark on the grounds of non-compliance.
Competitor Files in Right Class
After the rejection, the brand tried to make a new application. They dropped “Dubai” word from the trademark and tried to file in Class 30 this time. However, another applicant, cafeteria business with a similar brand name had already filed for the trademark in Class 30. This narrowed down the company’s chances of registering their preferred brand name.
Attempts to Oppose the Competitor Application
Dismayed by the new situation, the company has planned to file an opposition to the confusingly similar trademark application. Two similar brand names in the same trademark class is an undesirable situation. It would create brand confusion among the customers and would hurt the business prospects and brand identity.
Trademark agents in Dubai, however, advises that the chances of a successful opposition are less. This is because the competitor filed their application prior to the particular brand in question. This case should be considered as a classic example for illustrating the consequences of filing trademarks in the wrong classes. Always consult the best trademark agents before filing the application for trademark registration in the UAE.
Key Take-Aways
Filing in the wrong trademark class is a grave mistake that brand owners usually commit. A wrong class application will prevent brand owners from enforcing their trademark rights if an infringement occurs. As illustrated here, it may delay the process of trademark registration in the UAE. Things will get complicated if the application is riddled with other errors as well. The inclusion of ‘Dubai’ in the brand name also added to the woes of the brand owner, leading to trademark application rejection.
Always Consult with Registered Trademark Agents
The case study that we have described here is a typical example of the consequences of filing in the wrong classes. The brand owner here has suffered the rejection of trademark application apart from the need to fight a conflicting trademark. The brand also lost the right to enforce an opposition against the conflicting trademark. Prior consultation from the best trademark agents in Dubai such as Jitendra Intellectual Property might have prevented this situation.
JIP is a full-service Intellectual Property firm that has helped thousands of clients in successfully filing for trademark registration in UAE. JIP’s highly qualified team of trademark agents will ensure that the companies register their UAE trademarks in the most appropriate classes under the Nice International Classification. JIP’s legal consultants will also assist the business owners in all the legal procedures if a case of trademark infringement is detected.