REASONS FOR STRIKING OFF TRADEMARK IN THE UAE: EVERYTHING YOU MUST KNOW

In the United Arab Emirates (UAE), trademarks governed by the Federal Law No. (37) of 1992 on Trademark (“Trademark Law”) and Gulf Cooperation Council (GCC) Trade Mark Law. So far, the Trademark Law of the UAE is concerned; the Ministry of Economy is the competent authority to register valid trademarks. Therefore, each Trademark registered with the Ministry of Economy must ensure its validity and lawful usage. Nevertheless, the UAE trademark law also provides specific grounds for the cancellation of Trademark (s). A successful cancellation action will result in the partial or whole removal of trademark registration from the trademark register, notwithstanding the reasons for cancellation. This article aims to discuss the grounds for trademark cancellation in the UAE and provide pertinent information about striking off Trademark.

What is Trademark Cancellation?

Cancellation of Trademark is also known as striking off Trademark. According to the International Trademark Association, a cancellation occurs when a trademark registration removed from the register in response to a reported cancellation action. The cancellation procedure started when a party with capacity files a cancellation action with the trademark office’s authorised administrative body or the appropriate court.

Who may apply for Trademark cancellation?

1. Aggrieved party:

Anyone dissatisfied with a trademark registration may seek to have it cancelled. An aggrieved person is one whose rights have been violated or affected by the registration of a Trademark.

2. Any Interested person:

A person who is interested in a trademark may seek to have it cancelled. While anybody may apply for it, he may only do so for the reasons specified in the Trademark Law.

3. Ministry of Economy:

The administrative department of the Ministry of Economy may also cancel Trademark on its own if the trademarks related to any products or services are no longer registered. For example, in the case of non-renewal of the Trademark.

4. Registered Trademark owner

The registered owner of Trademark may also apply for striking off the Trademark from the register. 

Grounds for strike off Trademark in UAE

Cancellation of trademark registration is a significant issue for the owner since it loses the registration’s rights. Nonetheless, there are several grounds for the de-registration of a trademark:

1. Non-renewal of Trademark :

Under Article 19 of Trademark Law, the Ministry must inform the mark owner in writing on his registered address about the expiration of the protection term within the month following the expiry of the protection period. Suppose a mark owner does not file a renewal application within the (3) months after the protection period has expired. In that case, the Ministry shall suo motu strike the mark from the register using a move.

2. Request by registered Trademark owner:

Article 20 of Trademark Law states that trademark owner may seek to strike the mark from the register as a whole or a part of the goods or services for which the mark is registered. However, if a mark licensed for use and recorded in the Trade Marks Register, it may be cancelled only with the written consent of the licence beneficiary. Provided that the beneficiary explicitly waives this right in the licensing deed.

3. Unlawfully Registered marks

As per Article 21 of Trademark Law, the Competent Authority and any interested party may petition the court of jurisdiction for deregistration of an unlawfully registered trademark. If the Competent Authority obtains a conclusive decision in this respect, it must deregister the Trademark.

4. Non- use of Trademark

According to Article 22 of Trademark Law, the competent civil court may strike off a trademark registration upon request of any interested party. If it established that the mark had not been seriously used for five consecutive years, unless the mark owner shows that the lack of use is due to circumstances beyond his control, such as import restrictions or other government restrictions.

In case No. 297/2001, the Dubai Court of Cassation held that a trademark’s unique feature serves a vital function of eradicating consumer uncertainty. The court determined that the trademark ‘Lanzo’ was confusingly similar to previously registered Trademark’ Lanzor ‘in 1995 and struck off the mark ‘Lanzo’.

5. The registered mark is against the Trademark Law

At the request of any interested party, Trademark may strike off if:

1. The use of mark violates of requirements of Trademark law.
2. Trademark registered with bad intention.
3. The mark is similar or identical to other registered Trademark
4. The owner uses the Trademark in a manner that intentionally misleads the public.

Procedure to follow for striking off Trademark

i. Article 25 of Trademark Law, provide for the publication of the announcement of the striking off of a trademark in the bulletin and two Arabic newspapers at the applicant’s expense (who wants to cancel the Trademark).

Further, if a trademark struck off, it may not be re-registered in the name of a third party for the same goods for three years after the date of striking off.

ii. Article 45 of the Trademark Law, provides that, within thirty days of the date of striking off, the Ministry shall communicate about the striking off Trademark made thereon to the Competent Authority in each Emirate, the Federation of Chambers of Commerce and Industry, and the Chambers of Commerce and Industry in the State.

iii. As per Article 20(a) of Trademark Law, the Ministry may cancel a trademark after notifying the concerned party and giving the party a reasonable opportunity to present the defence. Concerned parties may submit a grievance with the appropriate civil court within thirty (30) days after noticing the striking off resolution.

The purpose of this article is to provide a general overview of the subject. You can seek professional advice in case of your specific situation. To keep the Trademark from being cancelled, it is significant for the trademark owner to take all necessary precautions when registering the Trademark. Trademark owners are advised to retain the services of one of Dubai’s most renowned trademark agencies like FAR consulting Middle East comprises highly experienced trademark agents who can assist rights holders in legal proceedings or disagreements over trademark cancellation petitions. FAR consulting Middle East, dedicated to safeguarding its customers’ trademark rights in the UAE.