Trademark Objection & Grievance

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Trademark Objection and Grievance in UAE

Trademark objection became the one of the common stages in the Trademark registration process. Trademark objection does not mean an immediately irrevocable rejection ; instead, the trademark registrar seeks a validation and explanation of reason about the trademark and registration. An opportunity is given to the applicant to explain how the said trademark meets the criteria to avail valid registration.

Official types of trademark Objection in UAE

  • Request For Grievance Against The Management Decision On A Trademark
  • Objection To The Acceptance Of A Trademark Registration
  • Response Of Objection to Accepting A Trademark Registration
  • Define A Hearing On Trademark – The Objector
  • Define A Hearing On Trademark – Objected Against
  • Complaint for Trademark Infringement

Process of Trademark Objection Against Examiner Decision

An objection is one of the initial stages in the registration process. It can be filed by the Examiner/Registrar.

This service allows the customer to file a grievance against a decision issued by the department regarding a trademark.

Reasons of Examiner refusal decision

  1. Trademark Objection due to errors in the application
    a) Incorrect details in Trademark form :If information relating to the applicant name, principal place or any other information in the trademark application is false then it most likely to raise a trademark objection.
    b) Wrong filing of trademark application: The trademark examiner can raise an objection if the trademark application is filed in the incorrect form. In case your trademark application is filed by a trademark attorney or agent then form must be filed and attached to the trademark application.
  2. Trademark Objection due to examiner decision of trademark rejection
    The reasons of rejection of trademark application can be divided into two lines: absolute and relative refusal Couse.
    a)Absolute Couse of refusal is referred to the incapability of marks to be distinctive or graphically presented.
    b) Relative Couse of refusal is always in connection with earlier trademarks and their related rights.
  1. Deceptive Marks:  These are marks that cannot be registered as trademarks because they mischaracterize or mislead consumers as to the underlying product. The usual test for determining whether or not a mark is deceptive is: (1) the mark missdescribes the character, quality, function, composition or use of the underlying product; (2) purchasers are likely to believe that the misdescription actually describes the goods; and (3) purchasers are likely to rely upon the misdescription in making their purchasing decision. Some courts have simply looked for an intent do deceive, instead of apply this test. In any event, if the mark is misleading, but does not qualify for being a deceptive mark because, perhaps, the mark’s owner had no bad intent, or because there is not likely to be any reliance by purchasers on the misleading description, then the mark is a deceptively misdescriptive mark.
  2. Lack Distinctiveness: Trademarks are only protectable if they are considered “distinctive.” The purpose of a trademark is to identify a consistent source to the consumer. In order for the trademark to do its job, it must be distinctive to the consumer. A trademark can be inherently distinctive, or it can acquire distinctiveness through long and exclusive use of that trademark by the trademark’s owner. When we talk about “distinctiveness,” there is a spectrum ranging from very distinctive to totally undistinctive. Trademarks which are arbitrary (random) or fanciful (made up words) are considered to be the most distinctive.
    Arbitrary – “Apple” (for computers and now many other things) is a classic example of an arbitrary trademark. Fanciful – Examples of fanciful trademarks include “NESCAFE” (coffee).
    Descriptive – One step further down are descriptive trademarks, and these cross a significant boundary because they are not inherently distinctive. They can acquire distinctiveness, but they are not protectable as trademarks right away. These trademarks describe a characteristic, quality, feature, or purpose of the goods or services.
    Generic – Last, and certainly least, are generic terms. These can never acquire distinctiveness and can never become an enforceable trademark. A generic term is simply a commonly used term to describe something.
  3. The existence of an Identical Trademark: If there are similar or same trademarks of different trademark owners on records regarding the same or similar description of goods or services, then an objection can be raised.
  4. False Specifications of goods or services: Filing a Trademark application under an incorrect class or a false description is wrong. Trademark applicant should specify exact items according to the Nice classification of goods/services.
  5. Offensive or obscene words as a part of or as a trademark: Any mark with obscene or offensive words or images as part of the trademark may face a refusal.

The Expected Duration of Service Delivery

The expected duration of service delivery for a process of trademark objection against examiner decision is 40 days.

Fees

Official fees for trademark objection required to pay to the UAE Trademark Office costs amount AED1750.

Required Documents

Following documents are required to file the application of trademark objection:

  1. Grievance document
  2. Objection document
  3. Power of attorney

Objection to the Acceptance of a Trademark Registration

This service allows the third party to file an objection against accepting the registration of a trademark, within thirty (30) days from the date of the latest announcement.

The Expected Duration of Service Delivery

The expected duration of service delivery for objection against accepting the registration of a trademark is 40 days.

Fees

Official fees for trademark objection required to pay to the UAE Trademark Office costs amount AED1750.

Required Documents

Following documents are required to file the application of trademark objection:

  1. Grievance document
  2. Objection document
  3. Power of attorney

Process of Trademark Opposition Against Trademark Application

The below is required process which the brand owners should follow when file a trademark opposition in the UAE:

  • File a written opposition to the UAE Trademark Office within 30 days of last publication of the trademark is opposed.
  • The UAE Trademark Office forwards the Opposition Notice to the applicant within 15 days (The opponent is legally not obliged to send the document to the applicant).
  • Applicant can file a written reply with the Trademark Office within 30 days from receipt of the Notice of Opposition. The response will not be automatically forwarded to the opponent and the applicant is not obliged to send the response to the opponent.
  • The application will be considered abandoned if the applicant fails to lodge a response within 30 days.
  • Once the reply is lodged, the Trademark Office will hear the submissions from either or both parties if they request to be heard.
  • The UAE Trademark Office will issue a decision after hearing the submission. It can either accept or reject the application or impose any restrictions or conditions on the application which it considers appropriate.

LIMITED TIME for filing a Notice of Opposition or Reply

The UAE Trademark Law is strict about the deadline for filing a Notice of Opposition or Reply. Applicant will not be granted any extension of the deadline for submitting a Notice of Opposition or Reply after time expiration.

 Complaint for Trademark Infringement

This service allows the owner of a registered trademark, pursuant to the law, to submit a complaint against any person who forges or mimics the trademark, in a manner that misleads the public – insofar as the goods or services – for which the original trademark stands.

The Expected Duration of Service Delivery

The expected duration of service delivery is 40 days.

The Expected Duration of Service Delivery

Following documents are required to file the application of trademark objection:

  1. Complaint document
  2. Power of attorney

Are you looking to modify your trademark ownership in the UAE? Our expert consultant can advise on the cost in UAE and assist you throughout the modification process. Drop us a line at [email protected] or give us a call at +97144470880 Alternatively, you can schedule a complimentary consultation with us at [email protected].

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