The introduction of Federal Law No. 36 of 2021 on Trademarks brought transformative changes to trademark law, particularly with the introduction of a third-party administrative cancellation process. At PalladiumIP Consultants, we specialize in guiding clients through this new framework, offering expert services to protect and enforce trademark rights. This article explores the key aspects of trademark cancellation under the new law, the administrative process with the UAE Trade Mark Office (TMO) and the associated costs.
Grounds for Trademark Cancellation
The new Trademark Law outlines several grounds for cancellation, aligning with UAE’s emphasis on the first-to-use principle and robust protection for trademark owners. Below are the primary grounds for cancellation, supported by PalladiumIP’s expertise in navigating these provisions:
1. Prior Use – Article 18(2)
Article 18(2) allows a prior user of a trademark to request cancellation of a registration within five years from the registration date, provided they did not implicitly or explicitly consent to the registered owner’s use. This provision reinforces the UAE’s first-to-use policy, and we assists clients in gathering evidence of prior use to build a strong case for cancellation.
2. Bad Faith – Article 18(1)
Registrations made in bad faith can be challenged. Article 18(1) states that ownership of a trademark cannot be disputed after five years of uninterrupted use from the registration date without judicial dispute, unless bad faith is proven. Our team excels in investigating and proving bad faith registrations, ensuring your brand is protected from unfair practices.
3. Non-Use – Article 24(3)
A trademark can be cancelled if it has not been used for five consecutive years post-registration without valid reasons (e.g., unforeseen circumstances). We support clients in filing non-use cancellation actions, leveraging comprehensive evidence to demonstrate lack of use by the registrant.
4. Wrongful Registration – Article 24(4)
The TMO may cancel a trademark, either on its own initiative or upon request, if it violates the Decree-Law’s provisions. Our firm provides strategic advice and representation to challenge wrongful registrations effectively.
5. Cancellation at Owner’s Request – Article 24
Trademark owners may voluntarily request cancellation. PalladiumIP assists in navigating this process to ensure compliance and protect future business interests.
Re-Registration Restrictions – Article 27
Article 27 stipulates that a cancelled trademark cannot be re-registered for the same or similar goods/services by another party for three years from the cancellation date, unless a court judgment specifies a shorter period. A TMO decision is treated akin to a court judgment.
Administrative Cancellation Process
The administrative cancellation process, now handled by the TMO, is a significant shift from the previous court-based system. We offer end-to-end support to streamline this process for clients. Our experienced legal team ensures all submissions are meticulously prepared, evidence is robust, and deadlines are met to maximize the likelihood of a favorable outcome.
Timeline
While the Executive Regulations mandate a 90-day decision period, current processing times range from 10 to 18 months due to the TMO’s backlog. We closely monitor case progress and keeps clients informed, leveraging our expertise to expedite where possible as the TMO refines its processes.
Why Choose PalladiumIP Consultants?
At PalladiumIP Consultants, we combine deep expertise in UAE trademark law with a client-centric approach. Our services include:
- Strategic Advice – Tailored strategies for filing cancellation actions based on prior use, bad faith, non-use, or wrongful registration.
- Comprehensive Support – From evidence gathering to drafting Arabic statements and representing clients before the TMO and Grievance Committee.
- Proactive Monitoring – Keeping clients informed of TMO updates and procedural changes to ensure timely action.
- Global Reach, Local Expertise – With a strong presence in the UAE and a network of international partners, we protect your brand locally and globally.
For more information on how we can assist with trademark cancellation or other IP services, contact us on info@palladium-ip.com.
Conclusion
The introduction of the administrative cancellation process under Federal Law No. 36 of 2021 marks a significant advancement in UAE trademark law, offering a more accessible and efficient mechanism for challenging registrations. PalladiumIP Consultants is your trusted partner in navigating this process, ensuring your trademark rights are protected with precision and professionalism. Stay tuned for further updates as the TMO continues to refine its procedures.
