UAE Law and Practice Contributed by: Maria Farrukh Khan, Fatima Shah, Heera Sandeep and Essam Abdel Khaleq, United Trademark & Patent Services
4.10 Refusal of Registration The Trademark Office may refuse applications under Article 3 (absolute grounds) in case of: • non-distinctive marks or generic/descriptive terms; • marks violating public morals or order; • public emblems, flags, official symbols, coins, banknotes and state/country/organisation symbols; • red crescent/cross symbols or imitations; • religious symbols; • geographical names causing origin confusion; • use of third-party names/surnames without con - sent; • unproven academic or honorary degrees; • deceptive marks or false origin/characteristics information; • marks containing others’ trade names; • marks owned by prohibited persons/entities; • marks identical/similar to prior filed/registered marks for the same/related goods if this creates the impression of connection or harms interests; • marks reducing the value of prior marks; • copies/imitations/translations of well-known marks for identical/similar goods; • copies/imitations/translations of well-known marks (general); • marks containing the term “Concession”, “Regis - tered” or “Copyright”, or similar terms; and • 3D shapes resulting from the product’s nature or technical necessity without distinctive elements. Applicants may appeal refusals to the Trademark Committee within 30 days of notification. 4.11 The Madrid System The UAE is a Madrid Protocol member (effective 28 December 2021). Requirements for international reg - istrations include: • real and effective industrial/commercial establish - ment in a Madrid Protocol member country; • domiciled in a Madrid Protocol member country; or • national of a Madrid Protocol member country. The applicant must also have registered or filed an application (basic mark) with the office of origin.
• a copy of their trade licence; and • notarised POA. Foreign companies require: • legalised POA (up to the UAE consulate in their home country); and • a priority document (if claiming priority based on an earlier foreign filing). Concerning POA submission, a signed copy is accept - able at filing; fully notarised/legalised POA is required within 90 days or the application lapses. Multi-class filing was introduced in 2021 but is not yet available on the online portal. Any individual, legal entity or trade body (local or foreign) can apply. For - eign applicants without a UAE licence must appoint a licensed UAE trade mark agent. 4.5 Use in Commerce Prior to Registration The Trademark Office examines relative grounds by checking the Official Register for identical or confus - ingly similar marks for similar goods/services. 4.7 Revocation, Change, Amendment or Correction of an Application Applications cannot be changed during registra - tion. Post-registration amendments can be made via recordal application to the Trademark Office. Registered mark owners can apply to the Ministry of Economy for additions/modifications to a mark’s form, or to goods or services, if it does not significantly affect the substance. This is subject to examination. 4.8 Dividing a Trade Mark Application Division of application is not possible in the UAE. 4.9 Incorrect Information in an Application Incorrect information may affect the owner’s rights. The Trademark Office checks formalities during the examination; formality issues are likely to result in rejection. Please refer to 2.4 Use in Commerce . 4.6 Consideration of Prior Rights in Registration
604 CHAMBERS.COM
Powered by FlippingBook