Trademark plays a crucial role in branding, and businesses should take necessary precautions to secure their mark. However, trademark registration is not enough to maintain the value and enforceability of a mark. Registering a mark is the initial process of trademark protection to maintain the value and enforceability of a mark; it should be used in commerce continuously. If you fail to use your mark continuously, it may be subject to cancellation. Federal Law No. 36 of 2021 introduced a third-party administrative cancellation process. In this blog, we will discuss the precautions that trademark owners should take to prevent the cancellation of the mark.
Grounds for trademark cancellation in the UAE:
Non-use cancellation of the trademark
Article 24(3) of the UAE trademark law stipulates that if a trademark has not been used for a continuous five years, it will be cancelled. The removal of a registered trademark from the official register is called trademark cancellation. Your competitors or any interested party can file for the cancellation of the mark if they can prove the non-use of the trademark. This rule is in place to prevent bad-faith registration, where a business registers a mark without any intention of using it and to block others from using the mark.
If the trademark owner can prove that the reason for non-use is beyond their control, then they may be able to avoid the cancellation of the mark. If a trademark has been cancelled, then it is no longer legally protected in the country, and the trademark owner won’t have the exclusive rights to use the mark.
Failure to renew the mark
In the UAE, a registered trademark is valid for 10 years, and after that, it must be renewed. If the trademark owner fails to renew the mark within the grace period, then the trademark will be cancelled. Your trademark will be removed from the official register, and a third party can register your mark. If another party registers your mark after cancellation, then they can benefit from the reputation of your brand. Businesses should renew their trademark at least 6 months before expiration. You can renew it during the grace period, but there will be additional charges.
Prior use
Article 18(2) of the UAE trademark law allows a prior user to apply for the cancellation of a mark within 5 years of its registration. So, if a business can prove the prior usage and the similarity with the registered one, then the trademark will be cancelled. This provision is in place to uphold the rights of prior users in the UAE.
Bad faith registration
A trademark will be cancelled if it is registered in bad faith. If a trademark has been registered and continuously used for five years, then no one can challenge its ownership; however, if it was registered in bad faith, it can be challenged. Bad faith registration can be described as registering a mark with bad intention, such as to register a similar mark to benefit from the reputation of the mark or to prevent others from entering the market. Businesses can seek the guidance of trademark professionals in the UAE to prove the bad faith registration.
Wrongful registration
A trademark will be cancelled if it was registered in violation of the UAE trademark law. If the registered mark misleads customers, then it is a deceptive mark. A mark should not be confusingly similar to a registered one. If the mark is generic or non-distinctive, then it may be cancelled. If the Ministry of Economy finds out about these violations, then the deregistration process will be initiated. A third party can request cancellation if they are affected by the registered mark. Companies should ensure that their mark is compliant with the UAE laws to prevent cancellation.
Trademark cancellation due to the owner’s request
The trademark owner can request the cancellation of the mark. If there is a licensee for your trademark, then their approval is necessary for the cancellation.
Business should monitor their trademark regularly to maintain the reputation and enforceability of their brand. Continuous usage of your trademark in commerce is necessary to prevent the cancellation of the mark.
How can Jitendra Intellectual Property help businesses to secure the value of their mark?
Trademark registration will offer you legal protection, but it won’t prevent the misuse of the mark. To prevent the misuse and maintain the value of the mark, it should be monitored. Jitendra Intellectual Property can help businesses with trademark monitoring in the UAE. Our professionals will guide you to gather relevant evidence in the event of any legal disputes.