An analytical reading of Articles (13) and (24) of Federal Decree-Law No. (36) of 2021 on Trademarks
Actions for the cancellation (striking off) of trademarks are among the most important legal mechanisms granted by the legislator to protect the market and fair competition, and to prevent the monopolisation of trademarks that have been registered in violation of the law or without actual use. However, the practical application of Federal Decree-Law No. (36) of 2021 on Trademarks has raised a precise legal issue as to whether recourse to the Ministry of Economy and submission of an administrative cancellation request constitutes a mandatory precondition before filing a judicial action seeking cancellation of a trademark, or whether the interested party is entitled to directly resort to the courts without going through administrative procedures.
The importance of this issue is heightened in light of the serious procedural consequences it may entail, potentially leading to the dismissal of the case for having been filed in a manner not prescribed by law. This makes the determination of the legal nature of the procedures set out in Articles (13) and (24) a fundamental issue that goes beyond theoretical discussion to direct practical application before the courts.
First: The Legal Framework Governing Opposition and Cancellation
Article (13) of the Trademarks Law regulates the grievance procedure against decisions issued by the competent administrative authority concerning the refusal to register a trademark or the suspension of registration procedures. It requires that grievances be filed before the Grievance Committee within the legally prescribed timeframe before resorting to the courts and explicitly provides for the sanction of inadmissibility in the event of failure to follow this procedure.
It is clear from this provision that the legislator intended to regulate challenges against an administrative decision issued by the Ministry of Economy; that is, the dispute in this case concerns the legality of the administrative decision itself.
In contrast, Article (24) regulates cases of trademark cancellation, including:
- Cancellation due to non-use for five consecutive years,
- Cancellation of a trademark registered in bad faith,
- Cancellation of a trademark registered in violation of the law,
- Cancellation of a trademark registered in conflict with a well-known mark.
The same article further provides that the rules relating to grievances and appeals set out in Article (13) shall apply to decisions concerning cancellation or refusal of cancellation.
This raises the core issue:
Does this mean that submitting an administrative request to the Ministry of Economy is a mandatory prerequisite before filing any court action for cancellation? Or does the reference in Article (24) apply only where an administrative decision has actually been issued regarding a cancellation request?
Second: The View Requiring Exhaustion of the Administrative Route
One interpretative approach holds that the legislator intended to subject cancellation claims, at the outset, to the jurisdiction of the Ministry of Economy, such that recourse to the courts is not permissible before exhausting the administrative route.
This view relies on several arguments, including:
That Article (24) expressly refers to Article (13), which, according to this view, indicates a unified procedural system governing grievances and cancellation.
That the Ministry of Economy is the technical authority responsible for managing the trademark register and therefore allowing it to initially examine cancellation requests aligns with its technical and administrative expertise.
That requiring the administrative route serves an organisational purpose by reducing litigation and allowing the administration to correct legal situations before judicial intervention.
Accordingly, under this interpretation, filing a cancellation action directly before the court without a prior administrative request may expose the case to a plea of inadmissibility for failure to follow the legally prescribed route.
However, despite its practical relevance, this approach remains subject to significant legal debate, particularly in the absence of an explicit provision stating that cancellation claims are inadmissible if the administrative route is not first pursued.
Third: The View Allowing Direct Judicial Recourse
On the other hand, another view holds that cancellation actions constitute substantive original claims that may be filed directly before the competent court without requiring a prior administrative request, unless the claim is directed at challenging an administrative decision issued by the Ministry.
This approach is based on strong legal and constitutional principles, including:
- The Principle of Access to Justice
It is a well-established principle that the right of access to courts is a fundamental right that may not be restricted except by clear and express legal provision.
Since Article (13) explicitly provides for inadmissibility in the absence of grievance, this sanction remains an exception that cannot be extended or applied by analogy beyond its expressly defined scope.
Article (24), although referring to Article (13), does not expressly impose inadmissibility for original cancellation actions in the absence of prior administrative recourse.
- Distinction Between Annulment and Substantive Actions
There is a fundamental distinction between:
Actions challenging an administrative decision issued by the Ministry, and
Actions based directly on a substantive right established by law.
Cancellation actions based on non-use, bad faith, or conflict with a well-known mark do not, in essence, constitute a review of administrative legality. Rather, they seek a determination of a substantive legal status concerning the continued validity of the trademark registration.
Accordingly, the court’s jurisdiction in such cases is not based on reviewing administrative decisions, but on its general jurisdiction over civil and commercial disputes concerning substantive rights.
- Judicial Nature of Cancellation Disputes
Cancellation actions, particularly those based on bad faith, well-known status, or non-use, require examination of complex factual and legal issues, including:
- Assessment of genuine use of the trademark,
- Evaluation of similarity and likelihood of confusion,
- Examination of bad faith,
- Assessment of acquired reputation,
- Reliance on expert evidence.
These matters fall inherently within the judicial function of courts and are not limited to administrative review.
- Restrictive Interpretation of Procedural Limitations
Provisions imposing inadmissibility must be interpreted narrowly and cannot be extended by analogy or inference.
Had the legislator intended to make the administrative route mandatory for all cancellation actions, it would have clearly and expressly stated so, in the same unequivocal manner adopted in Article (13).
Fourth: Analysis of the Reference in Article (24)
The core issue appears to lie in interpreting the scope of the reference in Article (24) to Article (13).
Does the legislator intend to subject all cancellation actions to mandatory administrative grievance procedures, or only to regulate appeals against decisions issued by the Ministry when such requests are actually submitted?
The more persuasive view is that the reference applies only to the second scenario, for the following reasons:
- Article (24) concerns substantive rights rather than merely a regulation of administrative appeals.
- It does not explicitly impose inadmissibility for original cancellation claims.
- Expanding procedural restrictions contradicts the principle of access to justice.
- The contrary interpretation effectively transforms the court’s jurisdiction into a secondary review following administrative determination, without clear statutory basis.
This interpretation is further supported by Dubai Court of Cassation Judgment No. 1729/2025 issued on 04/02/2026, which held that the Court of Appeal had imposed a condition on filing cancellation actions that was not provided for by the legislator, resulting from an incorrect interpretation of Articles (13) and (24). The Court further clarified that inadmissibility under these provisions presupposes the existence of an administrative decision issued by the Ministry of Economy, whether refusing registration, suspending it, cancelling it, or refusing cancellation.
Fifth: Practical Implications
Despite the strength of the view allowing direct court action, practical considerations require caution, as some courts may adopt a different interpretation and consider prior recourse to the Ministry a mandatory step.
Accordingly, in practice, the administrative route may sometimes be followed as a precaution to avoid procedural inadmissibility, particularly where no urgency or limitations exist.
However, in cases requiring urgent judicial intervention or involving complex disputes beyond purely administrative matters, direct recourse to the courts may be a legally sound and defensible option.
Practical Case Example
It is worth noting that I have previously filed several trademark cancellation actions before the Dubai Courts without recourse to the Ministry of Economy, and the courts accepted these cases and ordered cancellation of the infringing trademarks.
Conversely, I have also filed a cancellation action concerning a globally well-known trademark before the Federal Courts without following the same administrative route; however, the court ruled the case inadmissible for failure to follow the prescribed procedure.
Currently, we are in the process of filing a cassation appeal before the Federal Supreme Court against a Court of Appeal judgment, and we will subsequently provide a separate article setting out the legal principle that the Court will ultimately establish in this regard.
It is also worth noting that the cassation appeal primarily addresses whether the legal rule contained in Article (24) constitutes a mandatory (peremptory) rule that cannot be violated, or whether it does not rise to that level, thereby allowing for a different interpretation.
Conclusion
The issue of whether recourse to the Ministry of Economy is a mandatory prerequisite before filing a trademark cancellation action reveals an area of interpretative uncertainty within UAE trademark law.
While one approach supports the requirement of exhausting the administrative route prior to litigation, another, arguably more consistent with legal principles, holds that cancellation actions are substantive claims that may be filed directly before the courts, unless they are directed at challenging an administrative decision issued by the Ministry.
Clarifying this issue through consistent judicial precedent or explicit legislative amendment has become essential to enhance legal certainty and ensure uniform application of trademark law within the UAE.
For further information on trademark cancellation proceedings and brand protection matters in the UAE, please feel free to contact Fuad Attyeh at fuad.attyeh@alsuwaidi.ae