There are myriads of trademark-related mistakes which cost brands and businesses big money every single year. Business owners can prevent the majority of these issues by being aware of them and taking immediate action.
What are the most common trademark issues in UAE?
Although many more mistakes and issues crop up, the following represent the ones that businesses should pay close attention to:
1. Failing to thorough trademark search
The UAE Ministry of Economy (MOE) and World Intellectual Property Organization (WIPO) recommend searching all available trademark filing databases, including canceled and abandoned trademark registrations. Businesses are to keep an eye out for similar trademarks and exact copies which have been applied for or have been put in use in commerce.
Trademark laws, both local and international, operate on the basis of priority. Companies which use trademarks first own them and then prioritize later users. Brands that fail in conducting thorough trademark searches often see serious consequences onto their businesses later on when trademarks are already put to use. Take note: a tag line is also an enforceable trademark in UAE and internationally. Don’t forget to conduct searches and clear it as well.
2. Registering a fuzzy, indistinct mark
The trademark of a company has to be distinctive. A trademark application in UAE, which uses terms that are generic and descriptive to describe the products and/or services of a company will be rejected for registration in UAE or with the WIPO. Generic terms, in particular, are not eligible for securing trademark protection as they refer to general classes of goods and services rather than brands or companies.
For instance, if you’re getting a mark registered for a local coffee shop with the ‘Fresh Hot Coffee’ slogan or ‘Best Coffee’ name, it’s unlikely to be granted registration. These are too generic. A lot of coffee shops believe they’re the best, plus all serve hot and fresh coffee. A company has to choose a mark that’s fanciful or arbitrary. One that sets the brand apart or adds distinctiveness to a company.
3. Using the symbol, TM, incorrectly
The symbol, TM, is often referred to as the common law or poor man’s trademark. Its reach is very limited and only the geographic boundaries where the company operates. Should another business files an application for trademark registration to use the same exact trademark, the business will supersede the right of the other business with common law rights as they don’t hold water.
In order to protect a trademark, it has to be registered with the Ministry of Economy or WIPO. As soon as the business has filed an application and received intellectual property rights, it can then use the symbol, ®.
4. Failing to use a mark in commerce
Before sending the authorities an application for trademark registration in UAE, a company has to use the mark in commerce first in connection with the specific goods and services. When a business fails in using a mark in commerce prior to the filing of UAE trademark registration or international registration, it won’t be able to provide proof or declaration of how a mark is being utilized in the marketplace. The declaration is necessary for companies to proceed with the registration process.
5. Failing to monitor the application status
The UAE Ministry of Economy issues Office actions – letters that explain issues or problems with trademark applications. This is during the course of the registration process. Office actions include details regarding how and when applicants must respond in order to resolve issues.
A business has to monitor any pending application and the status once every three months from the filing date. A trademark specialist in Dubai, UAE can help in tracking the status of applications. When businesses fail in responding to Office actions within the stipulated time after their issuance, applications may get canceled or rejected altogether. In such a case, additional fees will be required in reinstating an application.
Trademark Registration Tip: Only register under the correct trademark classes.
A business in UAE has to describe, in full detail, products and services a mark will apply on the application form. A registered trademark will only be applicable to such products and services. For instance, if you are in the business of selling t-shirts, it’s not possible for your business to register a t-shirt logo under a car repair class. This is pretty obvious. However, selecting the proper classes can often seem very daunting.
To the local and international intellectual property authorities, it’s mandatory to register under the correct classes. While it can be tempting for you to list all products and services imaginable on one application, doing so is illegal. Every good or service that is listed on your application has to carry the trademark of your business. This is prior to the trademark offices issue a trademark registration.
All these mistakes can be avoided with the guidance and expertise of trademark specialists in Dubai, UAE.