Introduction
Ever wondered what happens when a trademark no longer serves its purpose or faces legal challenges in the UAE? Trademarks play a vital role in branding and protecting intellectual property.
But what if a trademark becomes a hindrance or is improperly registered? Understanding how to cancel a trademark in the UAE is essential. This article discuss about everything you need to know about trademark cancellation in the UAE including the whole process, grounds and cost involved.
What Is a Trademark in the UAE?
A trademark in the UAE is a unique sign, symbol, logo, or expression that identifies and differentiates the goods or services of one entity from those of others.
It can include names, words, signatures, letters, figures, drawings, symbols, titles, seals, or any combination thereof. Trademarks are protected under UAE law to help businesses establish a unique brand identity without interference.
Example: A company using a distinctive logo or brand name to market its products distinguishes itself from competitors, helping consumers recognize and trust its offerings.
Conditions for Trademark Cancellation in the UAE
In the UAE, trademarks are governed by Federal Decree-Law No. 36 of 2021 on Trademarks. This law outlines the conditions under which a trademark can be deregistered or removed from the official register.
1. Failure to Renew the Trademark
A trademark must be renewed every 10 years from the date of registration. If the owner fails to renew within the grace period (usually six months after expiration), the UAE Ministry of Economy may cancel the trademark.
- If not renewed, the trademark is removed from the register.
- Third parties can then apply for registration of the same or a similar trademark.
- The cancellation is published in the Official Gazette, giving a chance for objections.
2. Wrongful or Invalid Registration
A trademark may be deregistered if it was registered in violation of UAE trademark laws. This includes:
- Deceptive trademarks – Those that mislead consumers.
- Trademarks conflicting with existing rights – If a mark is too similar to a well-known trademark.
- Non-distinctive or generic marks – If the trademark is too common or does not meet the distinctiveness requirement.
If such a violation is found, the Ministry of Economy may initiate deregistration on its own or act based on a request from an affected party.
3. Owner’s Request for Deregistration
The trademark owner can voluntarily apply for cancellation. The process includes:
- Submitting an official request with required documents.
- Paying the prescribed fees.
- If the trademark has licensed users, approval from the licensee is required (unless the license contract states otherwise).
- The Ministry will review and process the request within 90 days.
4. Deregistration Based on a Court Order
If a UAE court issues a final ruling against a trademark, it must be removed from the register. This happens in cases like:
- Trademark infringement cases where the court decides that the registration was unfair or unlawful.
- Opposition cases where another party successfully proves prior rights over the mark.
Once a judgment is issued, the Ministry of Economy executes the deregistration and announces it publicly.
5. Bad Faith Registration
If a trademark is registered in bad faith, it can be challenged and removed. Bad faith includes:
- Registering a mark to block competitors from using it.
- Filing a trademark without any intent to use it.
- Copying a well-known international brand without permission.
Interested parties (such as competitors or previous owners) can file a request for cancellation, proving bad faith with evidence.
Legal Framework Governing Trademark Cancellation in UAE
Trademark cancellation in the UAE is governed by:
- Federal Decree-Law No. 36 of 2021 on Trademarks
- Cabinet Decision No. 57 of 2022 Issuing the Executive Regulations of Federal Decree-Law No. 36 of 2021 on Trademarks
These laws are administered by the Ministry of Economy, which oversees the implementation and enforcement of trademark regulations. The legal framework aligns with international standards, protecting intellectual property rights and ensuring fair competition.
Also Read: How to Register a Trademark in Dubai?
Grounds for Trademark Cancellation in UAE
The main grounds for trademark cancellation include:
1. Non-Use
- The trademark hasn’t been used for five consecutive years without a legitimate reason.
- Example: A company registered a trademark in 2018 but hasn’t used it since. In 2023, another entity can request cancellation due to non-use.
2. Prior Rights of Another Party
- Another entity holds prior rights to the trademark.
- Example: An international brand owns a trademark elsewhere, and someone registers it in the UAE without authorization.
3.Registration in Bad Faith
- The trademark was registered with malicious intent.
- Example: Registering a famous global brand’s trademark in the UAE to benefit from its reputation.
4. Trademark Misleading the Public
- The trademark deceives consumers about the product’s origin or quality.
5. Violation of Public Morals or Order
- The trademark contains offensive or prohibited elements.
How to Cancel a Trademark in UAE
Cancelling a trademark involves several steps:
Step 1: Submit an Application
- File a cancellation request with the Ministry of Economy via their official website.
Step 2: Provide Necessary Documents
- Trade license (for companies or institutions inside the country)
- Legal power of attorney if submitted through a registration agent
- A valid registration certificate
- An official letter explaining the reason for cancellation
Step 3: Pay the Required Fee
- Cancellation Fee: AED 750 (This fee covers the publication of the cancellation notice in the Official Trademark Bulletin)
Step 4: Notification to the Trademark Owner
- The Ministry will notify the trademark owner about the cancellation request, giving them an opportunity to respond.
Step 5: Examination of the Request
- The Ministry reviews the application, evaluates the evidence, and may conduct hearings if necessary.
- The ministry will review the request within (90) days starting from the application’s submission date.
Step 6: Issuance of a Decision
- A decision is made and communicated to both parties.
Step 7: Appeal Procedure
- If the decision is contested, parties can appeal within 30 days of notification.
Example: If you believe a competitor’s trademark infringes on your rights, you can initiate this process to seek cancellation.
Cost for Trademark Cancellation in UAE
The fee for cancelling a trademark is AED 750, which includes:
Publication Fee:
AED 750 (for publication in the Official Trademark Bulletin)
Payment of this fee is required when submitting your cancellation request to the Ministry of Economy. Ensure that the payment is made using accepted methods to avoid any delays in processing your application.
Example: By paying the fee of AED 750, your application will be processed, and the cancellation notice will be published, ensuring transparency in the legal process.
Defenses Applied in Case of Trademark Cancellation in UAE
If your trademark is facing cancellation, you can defend it by:
1. Demonstrating Genuine Use
- Providing evidence of trademark use within the last five years.
- Example: Sales records, advertising materials, or invoices showing the use of the trademark.
2. Legitimate Reasons for Non-Use
Explaining valid reasons for not using the trademark, such as import restrictions or other legal obstacles.
3. Challenging the Grounds
Arguing against the claims made in the cancellation request, proving they are unfounded.
4. Negotiation or Settlement
Reaching an agreement with the party requesting cancellation.
Tips and Advice
1. Maintain Active Use:
Regularly use your trademark in commerce to prevent cancellation due to non-use.
2. Monitor for Infringements:
Keep an eye on new trademark registrations and uses to protect your rights.
3. Legal Compliance
Ensure your trademark complies with UAE laws and doesn’t infringe on others’ rights.
4. Consult Professionals
Seek advice from legal experts specializing in intellectual property in the UAE.
Conclusion
Trademark cancellation in the UAE is a significant process that can impact your business. Understanding the legal framework, including the Federal Decree-Law No. 36 of 2021 and the Cabinet Decision No. 57 of 2022, and being proactive in protecting your trademark rights is essential. By staying informed and vigilant, you can navigate challenges and ensure your brand remains secure.
FAQs
The process can vary but typically takes several months, depending on the complexity and whether there are objections.
Yes, if you have legitimate grounds such as prior rights, non-use, or if the trademark was registered in bad faith.
Your trademark rights are revoked, and you can no longer claim exclusive use. Others may register or use the trademark.
Only under specific circumstances and usually requires legal action to prove the cancellation was unjustified.
While not mandatory, it’s advisable to consult a legal expert to ensure the process is handled correctly.
Use your trademark regularly, comply with legal requirements, and monitor for any cancellation actions.
The Cabinet Executive issues decisions like Cabinet Decision No. 57 of 2022, providing Executive Regulations for the Federal Decree-Law No. 36 of 2021 on Trademarks.
Visit the Ministry of Economy’s official website at www.moec.gov.ae for detailed information and official guidelines.
Disclaimer: This website does not create an attorney-client relationship. The information provided is for general informational purposes only and should not be construed as legal advice. Always consult with a qualified legal professional for specific legal guidance.
