UAE Law and Practice Contributed by: Maria Farrukh Khan, Fatima Shah, Heera Sandeep and Essam Abdel Khaleq, United Trademark & Patent Services
5. Trade Mark Procedure for Inter Partes Proceedings 5.1 Timeframes for Filing an Opposition or Cancellation After substantive examination, marks are published. Third parties can oppose within 30 days; there are no extensions and no cooling-off period (though parties may settle during proceedings). The revocation/cancellation timeframes are as follows: • prior users have five years to challenge registration; • cancellation is possible in case of non-use for five consecutive years (exceptions are made if there are justified reasons); and • bad faith – challengeable at any time, with good faith presumed after five years of use without dis - pute. Copyright has no cancellation mechanism (does not depend on registration). Compulsory licensing is avail - able (Article 21) but does not terminate copyright; it permits limited use while the author’s rights remain intact. 5.2 Legal Grounds for Filing an Opposition or Cancellation If a mark imitates/is similar to an existing mark or oth - erwise unregistrable, there are grounds for opposi - tion. Cancellation grounds (Article 24 of the Trademark Law) include the following: • an owner may request removal for all/part of goods/services; • a well-known mark owner can cancel a similar reg - istered mark within five years (unless the registrant acted in in bad faith); and • an interested party can cancel for reason of non- use (five consecutive years) unless emergency circumstances prevented use. Cancellation decisions are appealable to the court of appeal.
5.3 Ability to File an Opposition or Revocation/Cancellation
Any interested party may oppose. Trademark regis - tration is not required but strengthens the position. Foreign opponents must have a licensed attorney. The official fees are USD2,043 (filing) and USD96 (hearing). Attorney fees are USD2,000–3,500. Revocation/cancellation is initiated by the mark own - er, prior mark owner or interested third party (licensee, distributor). Licensees/distributors need valid POA from the prior mark owner. 5.4 Opposition or Revocation/Cancellation Procedure Publication initiates a 30-day opposition period. The applicant has 30 days from official notification to file a counterstatement; otherwise, the application is deemed abandoned. If a counterstatement is filed, the Trademark Office holds a hearing for written sub - missions and evidence. The decision is then issued. No discovery is taken. The system is based on docu - ment exchange and submission of evidence via formal statements with supporting documents. Revocation/ cancellation is filed with the Ministry, not the court – although this is subsequently appealable. Partial rev - ocation/cancellation is possible for voluntary owner requests. 5.5 Legal Remedies Against the Decision of the Trade Mark Office Trademark Office decisions are appealable to the Trademark Appeal Committee within 30 days of receipt. 5.6 Amendment in Revocation/Cancellation Proceedings There is no specific procedure for amending grounds/ details during active cancellation proceedings. Argu - ments and evidence should be submitted at filing or during response periods. Supplementary submissions to the Ministry of Economy are allowed.
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