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trademark registration in the UAE

What are the mistakes to avoid during a trademark registration in the UAE?

One of the most important aspects of ensuring business success in a competitive market like the UAE is brand protection. Though trademark registration in the UAE helps you achieve IP protection, making mistakes will result in the application being rejected.

In this article, you will learn everything about how to have a successful trademark registration in the UAE. A rejection or delay in registration will result in a waste of money and resources. In such cases, consulting with trademark agents in Dubai before registration is critical. Let us observe:

1.        Failure to conduct proper clearance

2.        Committing technical mistakes in the application

3.        Failure to respond to office actions

4.        Failure to maintain the application or registration

5.        When there is no control over the use of third parties

6.        Filing a trademark that is incompatible with other marks

7.        Incorrect identification of goods or services

8.        Obtaining a generic trademark

9.        Popular phrases or trendy slogans

10.    Obtaining a descriptive trademark registration in the UAE

11.    Unauthorized use of a person’s name

12.    How can Connect Group help you?

1. Failure to conduct proper clearance

The very first step in selecting a brand is to ensure that the brand is “clear” for use and registration. If a brand owner chooses the name MACAW for her new business, for example, she must ensure that no other company is using the same. She also must ensure that nobody has confusingly a similar name for the same or similar services.

Otherwise, all the money and time spent on establishing her brand name will be wasted when she discovers that another person already used that name. Worse, using a brand owned by a third party could expose her to trademark infringement liability.

2. Committing technical mistakes in the application

While the fields in a trademark application may appear straightforward, inexperienced users make frequent and sometimes serious, errors. These errors may result in them denying the application in its entirety or in the need to respond to an Office action. Mistakes include:

  • Failing to understand the level of “use” required to support a use-based application
  • Failing to understand when to apply based on “intent-to-use”
  • Attempting to register the trademark in the incorrect class
  • Filing an incorrect specimen
  • Failing to understand whether a mark can be registered as a trademark
  • And failing to develop an appropriate description of goods or services

3. Failure to respond to office actions

After an application is filed, it usually takes 3-4 months for an attorney at the Patent and Trademark Office to review it. If the application is flawless, it will be published for comment. However, if it receives no opposition, they will approve it for registration.

If there is a problem with the application, whether major or minor, the Examining Attorney will issue an Office Action requiring a response. Failure to respond on time will result in the application being considered abandoned.

An office action may raise a minor issue depending on the examining attorney. For example, he may require that a descriptive word be waived. Or maybe he wants you to modify the goods or services described in the application to be more specific.

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3.1 What other things could happen?

Now and then, a major issue arises that necessitates a substantive legal response. For example, the examining attorney may find that the mark applied for is confusingly similar to an existing registration or a previously filed application. In this case, they will refuse the application.

Hence, a non-lawyer may find it difficult to deal with this type of Office Action. Perhaps a legal argument can persuade the Examining Attorney that there is no likelihood of confusion. Or perhaps the trademark applicant can look for a co-existence agreement with the owner of the earlier registration.

To avoid abandonment of the application, you must submit a response must within six months from the date of dispatch of the Office Action. This is regardless of the magnitude of the matter or the strategy followed. Entrepreneurs who file applications on their own frequently fail to monitor their applications, resulting in a loss of investment and priority data.

Moreover, our specialized agency can help you with all the legal requirements for setting up a business in the UAE.

4. Failure to maintain the application or registration.

The trademark registration in the UAE is only valid during the time of use of the trademark. Therefore, trademark owners must comply with periodic filing requirements to keep their trademarks in use. A statement of use is required between the fifth and sixth years after registration.

Additionally, on the tenth anniversary and each subsequent tenth anniversary of the registration date, you must make a statement. Failure to pay a fee and file the required notice within the prescribed deadlines will result in the abandonment of a registered trademark.

The trademark holder must request extensions to file a declaration of use every six months to keep the application active. This is when a trademark application is filed based on intent to use and a notice of allowance is issued.

If you do not file an extension request (or a statement of use), your application for trademark registration in Dubai will be abandoned.

5. When there is no control over the use of third parties

Once you register your trademark, you, as an owner, must keep track of how it is being used. A trademark’s purpose is to indicate a single source of goods or services offered under a brand, thereby preventing consumer confusion.

If a trademark owner does not police its mark, there may be consequences. The owner must ensure that third parties do not use the same mark or a confusingly similar mark. If this is the case, the mark will be diluted.

In rare (but significant and very real) cases, poorly policed trademarks became so diluted that they became the generic term for a product. Aspirin, thermos, escalator, and Laundromat were all victims of this fate.

Entrepreneurs can certainly file applications and successfully register trademarks on their own. If this is the path you take, you must do something first. It is worthy to familiarize yourself with the application process to reduce the likelihood of a costly problem.

6. Filing a trademark that is incompatible with other marks

One of the most common mistakes made by trademark applicants is failing to conduct a trademark search. There is a greater chance that your proposed trademark will be confused with an already registered or applied trademark. Your proposed trademark and the competing trademark may be identical or confusingly similar in:

  • Appearance
  • Sound
  • Meaning
  • Application to related goods or services

In this case, you will have a difficult time with your registration with the UAE trademark office. The owner of a competing trademark may file an opposition to your trademark application. Depending on the validity of the opposition filed by the other party, your application may be delayed or even rejected.

To avoid these risks, search pending or registered trademarks. This is to see if there are any that are similar to your application and can be used to oppose it. To obtain efficient trademark search services, consult with the best trademark agents in Dubai.

7. Incorrect identification of goods or services

When registering a trademark in the UAE, you must specify the goods or services that you use or intend to use with your trademark. The goal of this requirement is to assist consumers in identifying the goods or services you provide under the trademark, not how you use them.

Hence, incorrectly identifying the goods or services may result in the UAE Trademark Office rejecting the trademark application.

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8. Obtaining a generic trademark

A generic trademark is ineligible for successful trademark registration in the UAE. It usually happens when you try to register a brand name. When a term or name enters common usage and consumers associate it with a specific rather than a source, it becomes generic.

For example, Mobile App Store and Pure Cotton Tee Shirts cannot be registered as trademarks for stores selling mobile phones, computers, or tee shirt brands. These are some common terms that have become generic as a result of their widespread use.

Instead, you can use some unique names for your brands that are not commonly used in everyday business. Coined words like XEROX and Dubizzle are protected as trademarks.

9. Popular phrases or trendy slogans

Trendy slogans or phrases that we use every day are popular and easy to attract potential customers’ attention. These slogans are used to express a common concept or sentiment in a way that is easily understood by the public. For example, “I Love Dubai”, “Drive Safely”, “Think Green”, and so on.

However, such slogans are ineffective as trademarks because they cannot identify the source of goods or services. These phrases simply indicate that you agree with a message or sentiment. Such applications will be categorically rejected by the trademark office. Slogans that are unique and identify your company as the source of the product or service can be registered as trademarks.

10.  Obtaining a descriptive trademark registration in the UAE

Trademarks that merely describe any aspect, feature, or quality of a product are ineligible for intellectual property protection in the UAE. Such trademarks are referred to as descriptive trademarks, and they are not unique. For example, ice cream is referred to as ‘cold,’ while yogurt is referred to as ‘creamy.’

These are descriptive trademarks because ice cream is cold and yogurt is creamy, and they simply describe the characteristics of the products. Due to the lack of distinctiveness in such trademarks, the trademark office may reject the application. To avoid rejection, choose a distinctive trademark, such as ‘Google.’

On the other hand, are you thinking about setting up a company in a Dubai Free Zone? If you are, we can help you understand its benefits.

11. Unauthorized use of a person’s name

They will deny a trademark registration application if the trademark includes a person’s name or photograph without their permission. If you apply for such a trademark, the UAE Trademark Office may request written consent from the person whose name appears in the mark.

For example, if your trademark includes an image of former US President Donald Trump, it will be rejected due to Trump’s lack of consent. It is preferable to avoid using other people’s names as trademarks. If such a trademark is unavoidable, consult with trademark agents in Dubai to find a viable solution to the problem.

12. How can Connect Group help you?

To ensure brand protection in the UAE, business owners must register a trademark. However, they must take great caution. This is to avoid some common mistakes that can delay the trademark registration in the UAE. Delays in registration are risky for you because your competitors may exploit you in the market.

A better solution would be to seek advice from the best trademark agents in Dubai on how to avoid rejection by adhering to best practices. Hence, Connect Group can be your best ally in this situation.

Would you like to contact us to obtain more information on how to have a successful trademark registration in the UAE? If you have any questions, send us an email at contact@connectgroup.co. There, you will be speaking to one of our representatives who will happily answer all your questions.

Apply today by sending us your CV to thetalentpoint.com. Furthermore, we will not store CVs that you send to contact@thetalentpoint.com.

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