Key Factors UAE Trademark Owners Should Be Aware of While Moving an Opposition

Once an application for trademark registration is filed in the UAE, the Trademark Office will examine its registrability and if accepted it will be published in the Official Gazette. This is where hiring a trademark agent in Dubai, UAE will be beneficial as the trademark agent will scrutinize the Official Gazette every month and alert their clients if any confusingly similar trademarks are filed for registration. This is a crucial moment for brand owners who have already registered their trademarks in the UAE as they can raise an opposition claim against the trademark application citing infringement. To file a formal opposition to the new trademark filing, the trademark owners need to prepare themselves and know about the trademark opposition proceedings in the UAE. If you own a registered trademark, you might require the assistance of trademark agents who provide efficient trademark watch services in Dubai for successfully raising an opposition claim.

Here is a list of key factors that you need to consider while filing a trademark opposition in the UAE.

1. When to File a Trademark Opposition in the UAE?

The process of trademark registration in UAE follows the legal framework set out in Federal Trademark Law No. 37 of 1992 (amended by Federal Law No. 8 of 2002) (“Trademark Law”). As per the UAE Trademark Law and the procedures set out by the Trademark Office, an opposition can be filed only when the official opposition period starts. The trademark opposition period in the UAE is 30 days which commences once the trademark application has been published in the Official Gazette. If you find that the trademark application in question is infringing your registered trademarks, you need to file a written notice of opposition at the Trademark Office within 30 days of the last publication of the application being opposed. Consult with the best trademark agents in Dubai, UAE before filing the opposition.

2. Who Can Oppose a Trademark?

Before opposing a potential trademark registration in Dubai, UAE you must ensure that you have a legitimate or genuine interest in initiating the proceedings. You should ask yourselves if you will be impacted if the opponent’s trademark application is allowed for registration. This means you need to have a personal stake in the outcome of the opponent’s potential trademark registration in the UAE. For example, if the proposed trademark is confusingly similar to your trademark, your brand will suffer damages in some way or the other. This an example that shows you have a personal interest in the opposition and it is better to avoid proceeding with the opposition application if you have only a general interest in the outcome.

3. Common Grounds for Opposing a Trademark Application

The likelihood of confusion is the most common reason why trademark owners oppose a potential trademark registration in Dubai. This happens when the proposed trademark is confusingly similar to your UAE-registered trademark. The confusing similarity is a strong reason for accepting your opposition claim because the existence of similar trademarks will confuse the consumers. Normally, the trademark owners get alerts about similar trademarks through trademark watch services provided by the best trademark agents in Dubai. The confusion can be created in many ways such as

a. Look-wise Similarity

You can file an opposition to a new trademark application if the proposed trademark looks similar to yours in appearance. Here the trademark office considers the visual aspects of similarity that the opposed trademark shares with the registered trademarks while considering the opposition claim. Sometimes two trademarks may share a common word or letter that may add to the confusion in appearance.

b. Phonetic Similarity

Sometimes when a brand name is trademarked, it can create confusion in the market due to the similarity in pronouncing the name. The similarity in pronunciation is a valid reason for the opposition even if the spellings are different. Consider these examples that illustrate how trademarks of different spelling can create confusion due to phonetic similarity: ‘Xceed and X-Seed’, ‘I Shine and ICE SHINE’, ‘SYCOS & SEIKO’

c. Colour-wise Similarity

If you find that a proposed trademark application may create confusion due to the similarity in colour, an opposition application may be filed. Some brands consider the colour as a distinctive element of their brand name and may find it infringing when other parties use the same colour. The Red Bull is a global energy drink giant that enjoys a good market presence in the UAE as well. Red Bull’s energy drinks are sold in blue and silver cans and the particular colour combination is a distinctive element of the brand.

4. You Can oppose Similar Trademarks Filed in Other Classes

In some cases, similar trademarks of the same goods or services may be registered in different classes. Such trademarks may create confusion among the customers if both reach the market. You can file an opposition if a similar trademark is filed for registration in any other trademark classes. For example, a scotch tape in Class 16 and an industrial tape in Class 17 may give rise to confusion if both goods have identical or similar brand names.

5. Registration in the Same Jurisdiction in Not a Prerequisite

Trademark registration in Dubai or UAE is not a prerequisite to filing an opposition against a proposed trademark application. However, your trademark should already be registered in some other jurisdiction. In such cases, you should file for a new application for trademark registration in the UAE at the same time you are filing for the opposition. However, you need to provide evidence that demonstrates that your trademark is registered in a specific jurisdiction and you have been using it commercially.

6. You Need to Submit Documents to Prove your Opposition Claim

While submitting an opposition claim, you need to submit the following documents to the Trademark Office

  1. Trademark Registration Certificate
  2. Issuance of first invoices to prove priority
  3. Other evidence such as publication or trademark worth
  4. What Happens after you File an Opposition?

Once you file the opposition, the Trademark Office will notify the other party who applied for a trademark that you are opposing. The other party will have 30 days to give a response to the opposition to defend the registrability of the trademark application. If he fails to file a response (counter-opposition) within the stipulated timeframe, then your opposition will be automatically accepted leading to the rejection of the proposed trademark registration in Dubai, UAE.

If the other party submits a counter-statement, then the Trademark Office will hold a hearing session and a decision will be issued. If the decision is in favour of you, then the other party has the option of appealing against the decision through a court within 15 days. If the decision is against your opposition claim, you can file an appeal against the Ministry’s decision within 15 days. The Trademark Office will issue a decision after the appeal and if the decision is still against your claim, you can file an appeal through a court within 15 days of the decision. Consulting with the best trademark agents in Dubai is an efficient way to successfully raise an opposition claim.

Consult with the Best Trademark Agents in Dubai, UAE

During the process of trademark registration in Dubai, after the examination of the applied mark is completed, the Trademark Office will publish the proposed mark in the UAE Official Gazette for third party opposition. During the opposition period, trademark owners are legally entitled to challenge the Trademark Office’s decision of accepting the proposed trademark application. Once the trademark opposition is filed by the Third Party, the registration procedure of the trademark application in question will be halted and the opposition proceedings will commence.

The trademark owners need the assistance of the best trademark registration service providers in Dubai such as Jitendra Intellectual Property (JIP) to comply with the rules while filing the opposition. JIP has a team of registered trademark agents in Dubai who alert the trademark owners through efficient trademark watch services if someone files an application for a trademark that is confusingly similar to their trademarks. Every month, JIP’s trademark agents go through the official Gazette and review every trademark to see if it is similar to the registered trademarks of their clients. JIP then alerts the clients on time and assist them in filing the opposition. JIP’s services include trademark registration, trademark search, trademark watch, and product registration.

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