Trade Mark Law is hot topic right now in the UAE – find more below on the latest changes in the Trade Mark Office practice with a focus on International Registrations.
International Registrations under the Madrid System and the UAE
Refused goods and services – under the new Law trade mark applications claiming protection for goods in class 33 are still not accepted in the UAE, and International Registrations will be treated the same way. Hence IRs designating the UAE for usually refused goods such as alcoholic beverages will be rejected when examined in the UAE.
Oppositions – the local Trade Mark Office ("TMO") will republish International Registrations for opposition purposes in the local Trade Mark Journal, once accepted.
Provisional refusals and local representation – the TMO officials said that this would depend on the nature of the refusal: if minor amendments are needed and the response is straightforward, then no representation will be required; for more complicated matters and oppositions, local representation will be needed and a Power of Attorney will be required under the usual conditions (notarisation, legalisation if applicant is outside the UAE).
Updates regarding trade mark filings in the UAE
Multi class filings – these are now possible since the new Trade Mark Law entered in force on 2 January 2022, but the online filing system is yet to be updated. This is likely to happen very soon and the TMO confirmed that multi class filings will be treated the same way as singe class and should one class be refused then the accepted class could be divided and proceed to registration.
Publication in local newspapers – this has already been stopped; hence a slight decrease of the filing costs is also to be reported!
Power of Attorneys – for now and until further notice, it is possible to file a trade mark application with a simply signed and translated document.
This is a fast-moving field, and we would be happy to assist you along the way!
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
