The UAE has recently issued a new Federal Trademark Law No. 36 of 2021 (the Trademark law), which came into effect on January 2, 2022. The new law replaces the previous Federal Law No. 37 of 1992 as amended, and introduces significant changes to the trademark registration and protection system in the country. One of the important aspects of the new trademark law is the cancellation of trademark, which affects the rights and obligations of trademark owners and users. This article will provide an overview of the cancellation of trademark in the UAE as per the new trademark law.
What is Cancellation of Trademark Registration?
Cancellation of trademark registration is the process of removing a trademark registration from the official register for various reasons. It can be initiated by the administration that issued the registration, by the trademark owner, or by an interested party who believes that the registration is damaging to their own trademark rights.
Conditions for Cancellation of Trademark Registration
The Administration has the authority to cancel the Trademark registration on its own initiative or upon the request of an interested party in the following cases:
- The registration of the mark is not renewed in accordance with article 21 of the trademark Law.
- The mark is found to have been registered in violation of the provisions of the law and this Resolution.
- The Trademark owner requests the cancellation in accordance with the provisions of article (24) section (1) of the law.
- A final verdict issued by the competent court orders the cancellation.
- The interested party proves that the Trademark is registered in bad faith or unlawfully.
You may want to know: Trademark disputes from a legal perspective in the United Arab Emirates
Grounds for Cancellation of Trademark in the UAE
According to Article 24 of the Trademark Law, a trademark registration may be canceled by the competent court based on the following grounds:
- Voluntary cancellation: The trademark owner may request the Ministry of Economy to remove the trademark from the register, for all or some of the goods or services for which the trademark was registered. This may be done for various reasons, such as changing the business strategy, abandoning the trademark, or avoiding disputes with other parties.
- Cancellation due to similarity with a well-known trademark: The owner of a well-known trademark with a reputation beyond the country’s borders can ask the Ministry of Economy to cancel the registration of any similar trademark within five years of its registration. However, the owner must show that the person who registered the similar trademark did so in bad faith or without their consent.
- Cancellation due to non-use: Any interested party may request the Ministry of Economy to cancel the trademark that has not been used for five consecutive years, unless there are emergency circumstances that prevented the use of the trademark.
- Cancellation due to violation of the law: The Ministry of Economy may, on its own or at the request of the interested parties, cancel the trademark that is registered in violation of the provisions of the Trademark Law, or in the cases specified by its Implementing Regulation. This is to ensure that the trademark register complies with the legal requirements and standards and to protect the public interest.
- Cancellation due to termination of the license: If the trademark is licensed to be used in accordance with a contract that has been entered or notated in the trademarks register, the Ministry of Economy may cancel this trademark at the request of its owner, unless the contract stipulates the consent of the licensee to the cancellation, without prejudice to the text of Article 31 of the Trademark Law.
You may want to know: Trademark Registration Process in UAE
How to Cancel the Registration of a Trademark?
A trademark owner may wish to cancel the registration of a trademark for all or some of the goods or services registered, without transferring their rights to another party or the public. This may be done for various reasons, such as changing the trademark, abandoning the business, or reducing the fees.
To cancel the registration of a trademark, the trademark owner must apply to the Ministry of Economy on the form prepared for such purpose after the payment of the prescribed fees. The procedure for canceling the registration of a trademark is as follows:
- Fill out the online application form for trademark services and select the option of “Cancellation of a Trademark”.
- Attach the required documents, which include:
- A copy of the trademark certificate
- A copy of the commercial license of the trademark owner
- A power of attorney from the trademark owner, if the applicant is a representative
- A written consent of the licensee, if the trademark has already been licensed, unless the licensee’s contract contains a provision stating the licensee’s express approval to waive the license.
- Any other attachments, as requested by the Ministry of Economy
- Wait for the approval of the Ministry of Economy, which may take up to 90 days. The Ministry of Economy will decide on the cancellation application after verifying the documents and the record of the trademark. The Ministry of Economy may notify the trademark owner of the reasons for the cancellation and hear their statements and arguments, if necessary.
- Receive the confirmation of the cancellation of the trademark from the Ministry of Economy, which will be issued in the form of a certificate or a letter. The cancellation of the trademark will also be recorded in the Trademark Register and published in the Ministry’s bulletin. The 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
- Pay the publication fees, if the request is from the owner of the trademark.
Also read more about - The New Trademark Law in the UAE
What are the effects of canceling the registration of a trademark?
Some of the effects of canceling the registration of a trademark in the UAE are:
- The trademark owner will lose the exclusive right to use the trademark for the goods or services for which it was registered. This means that they will not have any legal protection or recourse against infringers or competitors who may use the same or similar trademark.
- The trademark owner will not be able to prevent others from using the same or similar trademark for the same or similar goods or services.
- The trademark owner will not be able to renew the trademark registration or transfer it to another party. This means that they will lose the opportunity to extend the validity of the trademark or to monetize it by licensing or selling it to others.
- The trademark owner will have to surrender the latest trademark registration certificate to the Ministry of Economy. This is a legal requirement and a proof of cancellation of the trademark registration.
How to Protect your Trademark Rights in the UAE with HHS Trademark Lawyers in Dubai
If you are a trademark owner or user in the UAE, you should be aware of the grounds, procedures, and consequences of trademark cancellation. Trademark cancellation can affect your brand identity, reputation, and market share, and expose you to legal risks and liabilities. To protect your trademark rights and interests, you need the guidance and assistance of a professional and experienced trademark lawyer.
HHS Lawyers is a leading law firm in the UAE that specializes in trademark law and offers a range of legal services, such as trademark licensing, assignment, opposition, infringement, and cancellation. Our team of qualified and dedicated trademark lawyers in Dubai can help you to prevent, challenge, or defend trademark cancellation, and provide you with the best legal solutions for your trademark issues. Contact us today for initial consultation and get the expert advice and representation you deserve.