Key things to Know Before Opposing a Trademark in the UAE

A trademark opposition is a critical phase in the process of trademark registration in the UAE as it decides the fate of a newly filed trademark application. Trademark opposition in the UAE is also critical for businesses that own a registered trademark as they can prevent a conflicting trademark from being registered. A trademark opposition is a formal objection to registering a trademark.

You can file a trademark opposition if you think an accepted trademark application is confusingly similar to your registered trademark. However, the opposition can be time-consuming and costly. Therefore, you need to have a solid plan before filing an opposition. Trademark agents can advise you on filing opposition actions in the UAE.

Meanwhile, read the following blog to understand the key things to consider before opposing someone else’s trademark in the UAE:

Know the Deadline to file a trademark opposition

During the process of trademark registration, the UAE Trademark Office will publish a trademark application in the official gazette. At this point, any party can file an opposition if they believe their IP rights will be violated once the proposed trademark is registered. If no one raises an objection, the trademark will go registered.

However, you need to file the opposition within the stipulated deadline to prevent a conflicting trademark from getting registered in the UAE. You are required to file a written notice of opposition at the UAE Trademark Office within 30 days of the last publication of the trademark application. No party will be allowed to file an objection to a trademark application after this opposition period.

Assess degree of similarity

You can identify a conflicting trademark application if you have subscribed to trademark watch services in the UAE. Once you get an alert on the attempt to register a trademark that is confusingly similar to yours, you can conduct an assessment with the help of trademark agents in the UAE. You can ask the following questions to carry out the trademark similarity assessment:

• Is the other party’s trademark too similar to your registered mark?
• Are the goods and services also similar? To what extent?
• Will they market the goods in question to the same clients?

Check if you have grounds to oppose

The likelihood of confusion is the most frequently used reason for filing a trademark opposition in the UAE. However, you must have a registered trademark to file an opposition. If you own a trademark without registration, it will be difficult for you to establish trademark infringement. Trademark agents in the UAE can help you determine if you have sufficient grounds to oppose a trademark application in the UAE. Other grounds for opposing a trademark include the following:

• The proposed trademark is generic in relation to the goods and services it represents
• A purely descriptive trademark
• The applicant has no intention to use the trademark in commerce

Determine if you have the budget

You need to have a clear understanding of the cost of trademark oppositions in the UAE. You will be required to pay a government fee to file a trademark opposition in the UAE. However, if the opposition process drags on it will turn out to be costly. Check if you have an adequate budget to navigate a lengthy opposition process.

Decide if you want settlement

You have many options to resolve an opposition case other than dragging the other party to the courts. You can ask the other party to amend the application or registration to exclude certain goods. You can also ask the other party to enter into a coexistence agreement. Such an agreement enables you and the other party to use similar marks without infringing on one another. Most trademark opposition cases in the UAE are amicably settled as it saves money and time for both parties.

Follow the action plan

If you are worried that a new trademark will harm your registered mark, you must create an action plan to oppose the application. Once you and your trademark agent in the UAE have agreed upon an action plan, you need to follow it religiously until the case has been settled or litigated. Sticking to the plan until you achieve the desired goal is essential for the protection of your valuable trademarks.

Hire the Best Trademark Agents in the UAE

Filing a trademark opposition in the UAE is a critical process which requires a solid action plan that complies with the relevant laws and standard procedures. Trademark agents in the UAE such as Jitendra Intellectual Property (JIP) can help you create a robust action plan for filing trademark oppositions. We are one of the top IP firms in Dubai with years of experience.