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Grounds for Refusal of Trademark Registration Application in UAE

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Grounds for Refusal of Trademark Registration Application in UAE

Ministry of Economy is the competent authority to register and protect intellectual property in the UAE. A trademark exclusively identifies a product as belonging to a specific company and recognizes the company’s ownership of the brand in the UAE. In this article we will address the issues of the grounds for refusal of a trademark registration application in the UAE.

INTRODUCTION

In addition to knowing about strong trademarks, an entrepreneur should also know what kinds of registration marks are not recognized. Mostly there are two types of grounds for the rejection of a trademark:

• Absolute grounds: Trademarks that cannot differentiate one person’s goods/services from another person and do not have a distinctive nature are subject to rejection.

• Relative grounds: In the case of relative grounds, the mark is compared to existing prior rights. In particular, relevant grounds may arise when a mark sought is already in use or when a mark similar to the mark requested is already in use. This article will cover the reasons for which trademark registrations are often cancelled.

REFUSAL OF TRADEMARK REGISTRATION

Usually, applications for trademark registration refused for any of the following reasons that are absolute:

  • TRADEMARK CONSISTS OF GENERIC WORDS

Generic words are not subject to trademark protection (for example, PHONE can never register as a mobile phone trademark).

  • TRADEMARK LACK DISTINCTIVENESS 

It is not possible to register signs that lack any distinctive character (in the sense that the sign cannot differentiate the goods of one business from those of others) unless it can prove that the signs have acquired secondary significance. In general, the following kind of marks lack distinct features:

i. Descriptive words or signs cannot register as a trademark. For example, the word ‘Shoe’ cannot be registered as a trademark concerning the Shoes

ii. Geographic words or signs, if they are used to describe a geographical location.

Example: The term German BAND for a music band in Germany is geographically descriptive and thus not distinguishable from other bands in the country. In such cases, other music producers can also use the word GERMAN to indicate the origin of their goods.

iii. Descriptive Advertising slogan

Trademark applications often rejected if the advertising slogan is composed entirely of descriptive and non-distinctive content and are incapable of identifying the source. It is often difficult for slogans to acquire uniqueness and trademark registration since their primary purpose is to promote and communicate information about the business and its product. Advertising slogans usually refused due to the lack of uniqueness. For example, consider the phrase “Where all your favorite things come together.” The UK Trade Mark Registry rejected this phrase in connection to chocolates on the basis that it was “merely a sequence of common dictionary terms” that “would readily spring to mind in order to communicate a promotional message for confectionery.”

An exception to the Absolute Grounds

The absolute grounds outlined above provide the basis for the rejection of a trademark registration application. However, if the applicant successfully proves before the Ministry of Economy, UAE, that the trademark has achieved distinctiveness in the market, such mark is liable for trademark registration.

Meaning of Acquired Distinctiveness or Secondary meaning Trademarks 

Usually, the trademark acquires distinctiveness when such trademark used with the product for an extended period. If you can show that your brand has gained secondary meaning or uniqueness by usage, you may overcome a lack of distinctive character. Further, If you can establish that the general public understands the descriptive term as a trademark related to your goods, a descriptive trademark gains secondary meaning. It typically occurs as a consequence of broad usage overtime or a marketing campaign. HEALTHY CHOICE®, for example, is a “weak” trademark for healthily prepared main dishes that have gained uniqueness in the United States of America because the public connects that word with a specific supplier of healthily prepared meals rather than with healthy meals in general.

How to prove the distinctiveness of a trademark?

The following evidence needs to consider for establishing the distinctiveness of the trademark. Invoices, delivery slips, order slips, bills, receipts, account books, pamphlets, printed matter containing advertising, publicity, photographs demonstrating trademark use, certificates issued by an advertising agency, trade association, or customer, consumer surveys.

Example: The slogan THE GREATEST SHOW ON EARTH® was determined to be a protectable trademark in the United States of America because its owner, Ringling Bros-Barnum & Bailey Combined Shows, Inc., established secondary meaning through the slogan’s long (over 100 years) and extensive use, as well as the slogan’s widespread recognition as a trademark in the marketplace.

  • TRADEMARK CONSIST OF FIRST NAME OR SURNAME

A person cannot register a trademark for his or her given name. As it increases the likelihood of a trademark application being rejected for registration. In certain countries, this is an absolute cause for refusal. Still, in most others, it is a relative ground for refusal if the name is mainly a surname. However, if a surname has acquired secondary significance in certain countries, it may be registered as a trademark.

For example, Bros-Barnum & Bailey Combined Shows, Inc. established secondary meaning through its long (over 100 years) and extensive usage of the phrase and its broad awareness as a trademark in the marketplace.

  • DECEPTIVE TRADEMARK

Applications for trademarks often refused if the use of such trademark liable to mislead the public.  For example, the EU Intellectual Property Office (“EUIPO”) rejected the application for “LACTOFREE” due to worries that the mark might induce consumers to think that the products were lactose-free. The EUIPO reasoned that the mark “LACTOFREE” would be deceptive if the products sold under the mark included lactose.

  • FUNCTIONAL FEATURE 

Functional elements of a product’s shape or packaging are usually not trademarked. For example, where a product’s form has available essential parts – such as the shape of a pair of scissors’ handles and blade assembly required for the scissors’ operation – such shape cannot be registered as a trademark. Similarly, since the handle serves the vital function of allowing us to hold a hot cup, trademark registration for a handle, such as on a coffee cup, is not permitted.

  • SIGNS CONTRARY TO PUBLIC ORDER OR DECENCY

Generally, words and images contravene widely recognized moral and religious standards are not permitted to be registered as trademarks.

  • TRADEMARKS CONTAIN PROHIBITED NAMES OR SYMBOLS

Certain nations have a list of particular signs that are not registerable. They may include but are not limited to company names, celebrity names, well-known, protected geographical indicators, indigenous peoples’ signs, emblems, flags etc.

RELATIVE GROUNDS

When a proposed trademark conflict with previous trademark rights, it is denied on “relative grounds.” Consumers may get confused if two identical (or highly similar) trademarks for the same product are used. Some trademark offices examine for conflict with existing brands, even unregistered trademarks and well-known marks, as part of the registration procedure. In contrast, others do so only when another company has contested a trademark after trademark publication. In any instance, your trademark will be denied or revoked if it is found to be identical or confusingly similar to an existing trademark for identical or comparable goods.

Finally, in the UAE, your trademark application may be denied if it infringes on other rights, such as industrial design, copyright, personal/company/business names, commercial designation, geographical indication, or indigenous peoples’ signs.

The purpose of this article is to provide a general overview of the subject. Selecting a wrong trademark can result in the cancellation of a trademark application. You must be very cautious while choosing a trademark. Trademark experts like Farahat & co. can help and guide the owner in selecting a strong trademark. Experts also offer trademark search and registration services in Dubai, United Arab Emirates. They can help and support you in properly completing the trademark registration process and achieving a favorable outcome.

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