Trademarks law in the United Arab Emirates has recently undergone several changes including provisions concerning opposition/s. We have formulated and provided answers to some of the relevant frequently asked questions (FAQs) which specifically deal with the opposition/s as laid down under the UAE Trademarks law. These are as follows:
1- Does the UAE trademarks law provide for opposition/s or objection/s to registration of a mark by third parties?
Yes, the UAE trademarks law does provide for opposition proceedings in the form of an objection to registration of a trademark/s. Article 7 of the Executive Regulations (Cabinet Decision No. 57/2022) issued in relation to the Federal Decree-Law No. 36/2021 specially states that any concerned person shall have the right to submit a reasoned objection to the registration of a mark.
2- Where can we file the notice of opposition or objection to registration of a mark?
The Ministry of Economy is the competent authority for filing of the notice of opposition or objection to the registration of a mark.
3- Is there any time-period for filing of the notice of opposition or objection to registration of a trademark, and if yes, is it extendable?
Yes, there is a time limit of 30 days from the date of publication of a mark in the Ministry of Economy’s Bulletin within which its’ registration can be opposed or objected to and this time period is non-extendable.
4- Can the notice of opposition be filed without the Power of Attorney and what are its requisitions?
No, the notice of opposition should be accompanied with Power of Attorney. If the opponent is based within the UAE, Power of Attorney should be notarized. However, if the opponent is based outside the UAE, then such a Power of Attorney should be both notarized and legalized. Also, it must be either in Arabic or Bilingual i.e., Arabic and English.
5- What is the procedure followed in opposition proceedings?
a. Once an objection to registration of a mark or the notice is filed within 30 days of its publication in the Ministry’s Bulletin, the competent department should then serve a copy of said notice onto the other side within 15 days of its submission.
b. Post service of the said notice comes the stage of filing of the written reply by an Applicant to the objection defending its application. It is to be completed within 30 days from the date of such a notification.
c. Upon submission of a reply by an Applicant, the competent department will then set the timeline for hearing statements and taking on record the evidentiary documents. It shall accordingly notify the parties involved. The party who desires to attend the hearing shall also pay the prescribed fees. Accordingly, the hearing officer hears either or both the parties – as the case may be.
d. Thereafter, the competent department shall inform the parties of its reasoned resolution including any terms and conditions it deems appropriate to be levied.
6- Can the notice of opposition be filed by an entity relying on its unregistered trademark?
Yes, the notice of opposition can be filed by an entity relying on its unregistered trademark. The opponent should have a legitimate interest in initiating these proceedings which implies that the rival marks should be close, and the opponent should be able to show its prior adoption/use of a trademark in the UAE and/or internationally.
7- What are the main grounds of opposition available to the opponent under the UAE law?
The main ground/s for opposition available to the opponent under the UAE law are relative grounds. In other words, there should exist conflict with the opponent’s mark having prior right/s in a trademark based on application, registration, use, or goodwill and reputation enjoyed by it. Further, proof of prior trademark registration/s and filing/s by the opponent in the UAE or internationally, improves the chances of succeeding in an opposition claim. Further, if it can be shown that there have been past dealings of the opponent with the applicant, this will help to strengthen the case of “bad faith” adoption on the latter’s part.
8- What happens if an applicant fails to file its reply to the notice or objection/s raised by the opponent within the given time period of 30 days? Is this deadline extendable?
If an applicant fails to file a response (counter statement) within the stipulated time period of 30 days of having received the notice/objection, then the opposition will be allowed, and the mark refused registration. This time period is non-extendable.
9- How long does it take for the opposition proceedings to conclude?
The whole process is likely to take anywhere between 4-8 months to conclude.
10- Is the decision passed in any opposition proceedings by the competent department of the Ministry of Economy appealable? If yes, where should such an appeal be filed and what is the time limit for filing it?
Yes, the decision passed by the competent department is appealable. An appeal against such a decision should be filed before the Grievance Committee within 30 days from the date of its notification.
11- Is the decision passed by the Grievance Committee appealable?
Yes, the decision/s passed by the Grievance Committee is appealable before the Federal Court of Appeal within 30 days from the date of its notification.
To sum up
The Trademarks law including the executive regulations clearly lay down the procedure involved in objecting to the registration of a mark. It provides for the specified timelines to be adhered to while objecting and replying to such an objection. Further, it also provides for appointment of hearings to resolve the conflict though the option to attend has been left with the parties involved. Any decision passed by the concerned department is appealable which helps in addressing a grievance which either party may have against it.
Rajiv Suri is a senior associate in the intellectual property and corporate and commercial team at Alsuwaidi & Company. Rajiv advises clients on strategies involving a wide range of intellectual property matters and has been involved in managing corporate portfolios across various industries.