Trademarks are important assets for businesses that help them protect their brand identity and reputation in the market. However, registering a trademark is not enough to ensure its validity and enforceability. The trademark owners also need to use their trademarks actively and consistently, or else they may face the risk of cancellation due to non-use.
If a trademark is canceled on the basis of non-use, it may affect the relationship between the trademark owner and any licensee who uses the trademark in the UAE. The licensee may face legal consequences or lose their rights under the license agreement. Therefore, it is advisable for trademark owners to record their trademark licenses in the UAE and monitor their usage regularly.
What is Cancellation of non-use Registered Trademarks?
Cancellation of non-use registered trademarks in the UAE is a process that allows third parties to request the cancellation of trademarks that have not been used for five consecutive years since their registration, unless the trademark owner can prove that the non-use was due to reasons beyond their control.
Legal Basis for Trademark Cancellation in the UAE
The UAE Trademark Law (Federal Law No. (36) of 2021) establishes the rules and procedures for trademark registration, protection, and cancellation in the UAE. The law stipulates that the competent administration or the court has the authority to cancel the registration of a trademark if it is not used for a period of five consecutive years from the date of registration or the last renewal. The cancellation of a trademark registration entails the loss of the exclusive right to use the trademark and the legal protection against any unauthorized use by others.
Find more info about- Trademark disputes from a legal perspective in the United Arab Emirates
Grounds for the Trademark Cancellation in the UAE
- Removal by Owner: The owner of a Trademark may request the Ministry to remove it from the Register, either partially or wholly, for the goods or services that it covers.
- Cancellation of Similar Trademarks: The owner of a well-known Trademark that has a reputation beyond its country of origin may request the Ministry to cancel a similar Trademark registered by another party within five years of its registration, unless the latter party can prove that it acted in good faith.
- Cancellation for Non-Use: Any interested party may request the Ministry to cancel a Trademark that has not been used for a continuous period of five years, unless there was a valid reason for its non-use.
- Cancellation for Violation: The Ministry may cancel a Trademark, either on its own initiative or upon the request of any concerned party, if the Trademark was registered in contravention of the Law or its Implementing Regulation.
- Cancellation for Non-renewal: If the registration of the mark is not renewed in accordance with article (21) of the law, which requires the payment of a renewal fee every ten years from the date of registration or the last renewal.
- Court verdict: Based on a final verdict issued by the competent court, which may order the cancellation of the trademark registration as a result of a legal dispute or a challenge by an interested party.
- Bad faith or unlawfulness: At the request of the interested party if the trademark is found to have been registered in bad faith or unlawfully, which means that the registration was made with the intention of deceiving, misleading, or harming the public or the rights of others.
Read useful tips - How to Prevent Trademark Infringement in the UAE
Procedures for Trademark Cancellation
According to Article (14) sections (2) to (6) of the resolution, the procedures for trademark cancellation are as follows:
- Owner’s application: The owner of a registered trademark who wishes to cancel its registration for all or some of the goods or services registered must apply to the competent administration (Ministry) on the form prepared for such purpose after the payment of the prescribed fees.
If it is found from the record that the trademark has already been licensed, the cancellation shall only be made based on the written consent of the licensee unless the licensee’s contract contains a provision stating the licensee’s express approval to waive the license.
- Electronic submission: The cancellation request is submitted through the electronic services of the competent administration after the payment of the fees, with the ministry deciding on the cancellation application within (90) ninety days of the date of application.
- Notification and hearing: Before the cancellation, the Ministry may notify the owner of the trademark of the reasons of the cancellation and that in order to hear his statements and look into his arguments.
- Recording and publication: The ministry shall record such cancellation in the trademark register and will publish it in the ministry’s bulletin. Such a publication shall include the following:
- Image and description of the trademark.
- The number of the registered trademark.
- The name and nationality of the owner.
- The reason for the cancellation of the registration and its date.
- Publication fees: Payment of the publication fees need to be paid for the cancellation if the request is from the owner of the trademark.
Consequences of Trademark Cancellation
The cancellation of a trademark registration has the following consequences:
- Loss of rights: The cancellation of a trademark registration means that the owner loses all the rights and benefits conferred by the registration, such as the exclusive right to use the mark, the right to prevent others from using confusingly similar marks, and the right to license or assign the mark to others.
- Removal from the register: The cancellation of a trademark registration means that the mark is removed from the trademark register, which is a public record of all the registered trademarks in the country. The removal of the mark from the register implies that the mark is no longer protected by the law and the resolution, and that it is available for registration by others.
- Effect on related marks: The cancellation of a trademark registration may also affect the validity and enforceability of other marks that are related to the canceled mark, such as collective marks, certification marks, well-known marks, or marks that are part of a series. The effect of the cancellation on related marks depends on the reason and the scope of the cancellation, and may require a separate assessment by the competent administration or the court.
know more about - How Businesses Can Register a Trademark Internationally
How HHS Lawyer Can Help You with Trademark Cancellation in the UAE
Are you looking for a reliable and experienced lawyer to help you with trademark cancellation in the UAE? If so, you should contact an HHS Lawyers in Dubai today. HHS Lawyer is a leading law firm that specializes in intellectual property law and has successfully handled many cases of trademark cancellation due to non-use. Whether you want to cancel a trademark that is not being used by its owner, or defend your trademark from being canceled by others, HHS Dubai Lawyers can provide you with the best legal advice and representation.
Don't let your trademark rights be violated or wasted. Call HHS Lawyers in UAE now and get an initial consultation.