Spotted Someone Infringing on your Trademark? Follow these Steps & Avail IP Watch Service

You may sometimes stumble across a brand name or logo similar to yours while searching for your company or products online. Someone else is trying to profit from your brand’s reputation by copying your trademarks registered in the UAE. You have invested money and resources for performing trademark registration in the UAE and someone else is making a profit at your expense.

Trademark infringement can create brand confusion among customers leading to tarnished brand image and dent in revenues. It’s an unforeseen situation and you should immediately consult with your trademark agents in Dubai who can provide robust watch services to prevent infringement and provide possible legal recourse. That all being said, here are the fundamentals of how to look for and handle a trademark infringement in the UAE.

Understand what Constitutes Trademark Infringement 

Before proceeding with filing an objection, you must be sure whether the trademark in question is infringing your registered mark. Unauthorised usage of a trademark, or a trademark similar to it, in connection with the goods and services for which it is registered, constitutes a trademark infringement in the UAE. Infringement includes using the trademark in a way that would cause consumer confusion, marketplace deception, or an error regarding the source of the goods or services.

Trademark owners can initiate legal proceedings irrespective of the intention behind the infringement. It doesn’t matter whether or not the infringement is done on purpose. The trademark’s owner still has the right to defend their mark to prevent infringement and potential confusion in commerce from continuing to occur.

Assess How Similar the Trademark Is To Yours 

Before filing an infringement claim, you need to ensure that your argument is valid. You can enlist the assistance of trademark agents in Dubai to assess the opponent’s trademark. Together, the trademark agents and the trademark owner can assess the conflicting mark based on the following questions:

  1. Is the opponent’s trademark similar to yours?
  2. Is the opponent’s mark registered under goods and services (NICE Classification) similar to yours? If yes, to what extent?
  3. Do you and the opponent share identical channels of trade?
  4. Will the goods in question be marketed to the same consumers as yours?

If you think the answer to any of these questions is in the affirmative, your decision to oppose the trademark application will turn out to be right. Go ahead to oppose the application filed for trademark registration in the UAE.

File an Opposition with the Trademark Office 

You can prevent an infringer from copying your trademark by filing an opposition with the UAE trademark office. This method applies only when someone tries to register a trademark in the UAE, which is identical or similar to yours. The trademark agents in Dubai you hired will alert you when they find an infringing trademark application published on the Official Gazette.

The term for opposition to trademark registration in the UAE constitutes 30 days counting from the date of publication in the Official Gazette. During the opposition period, you can report to the Trademark Office that the proposed trademark is identical or similar to yours. The Trademark Registrar will consider your objection and will come up with a favourable verdict if your claim is found to be valid.

Send a Cease and Desist Letter 

Before initiating a formal legal action through courts, you can send a cease and desist letter to the potentially infringing party. A cease and desist letter is a notice through which the brand owners can issue a warning to the potential infringers, telling them to stop using their trademarks they go ahead with a lawsuit. A cease and desist letter will allow you to reach a settlement agreement before escalating the matter to filing a lawsuit in court. Trademark agents in Dubai can help you in sending a cease and desist letter to the potential trademark infringers.

Filing a Complaint with Ministry of Economy 

If the potential infringer doesn’t respond to your cease and desist letter or is reluctant to stop using the trademarks, you can file a case with the UAE Ministry of Economy. The relevant department or committee in the Ministry will help both parties reach an amicable solution. If the committee has arrived at a verdict but the infringing party doesn’t agree with the decision, the case will be raised to the competent court—the Court of First Instance.

Engage a Trademark Dispute at a Court 

In some cases, the judge may deliver a ruling in the first stage but the other party may still think it is not a fair decision. In that case, he can file an appeal and the case will be raised to the Court of Appeal. The last stage of the competent court will be the Court of Cassation where the ruling will be either ratified or cancelled. The verdict by the judge at this point will be considered final and both parties are expected to accept the ruling.

Consult with the Best Trademark Agents in Dubai, UAE 

The majority of trademark infringement cases are resolved early on through settlements for which you need the assistance of trademark agents in Dubai such as Jitendra Intellectual Property (JIP). Trademark infringement disputes can be very complex and full of potential pitfalls, but JIP can assist you throughout the process. For instance, we provide robust trademark watch services in Dubai which will alert you when a conflicting application is filed with the Trademark Office.

Every month, JIP’s trademark agents in the UAE scrutinise the official Gazette and review every trademark to see if it is similar to the registered trademarks of our clients. JIP then alerts the clients on time and assists them in filing the opposition. JIP’s other services include trademark registration in the UAE, trademark search, trademark watch, and product registration.

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