Ensuring Effective Trademark Renewal in the UAE

A trademark is the identity of your brand, distinguishing it from competitors in the marketplace. Securing it throughout your business’s lifetime through renewal is crucial for protecting your brand’s reputation and maintaining the exclusive rights to your intellectual property.

What is Trademark Renewal?

Federal Decree-Law No. 36 of 2021 on Trademarks defines a trademark as the “distinguished forms of names, figures, graphics, titles, logos, hallmarks, seals, patterns, etc.” that helps the consumers uniquely identify and distinguish the goods or services from others in the market.

A business can register its trademark and exercise the exclusive rights provided by the law over such marks. A business can register its trademark and exercise the exclusive rights granted by law. However, for continued and exclusive legal protection of your trademark, timely renewal as prescribed by law is necessary. The process of extending the validity of a registered trademark is known as Trademark Renewal.

What is the Validity of a Registered Trademark in the UAE?

Article 21 in the Federal Decree-Law no. (36) of 2021 details on the trademark protection period and extension thereof.

Once a business registers its trademark, the validity period is 10 years from the date of filing the application. To maintain legal protection beyond this period, the business must apply for renewal with the UAE Trademarks Office. Notably, Trademark Renewal does not require additional examination.

Trademark Renewal Timelines in the UAE-

• When to Renew: As per UAE trademark laws, trademarks must be renewed every 10 years from the filing date. Trademark renewals can be initiated 6 to 12 months before expiry.
• Grace Period: For late renewals, the grace period provided under the UAE Trademark laws for the filing of trademark renewal is 3 months from the expiry date. A 3-month grace period is provided after the expiry date for late renewals. However, penalties may apply for renewing during this grace period.
• Consequences of Non-Renewal: Failing to renew your trademark within the prescribed period results in loss of your exclusive rights over the mark, resulting in cancellation of such marks from the official trademarks register.

Process of Trademark Renewal in the UAE

1. Submission of the Renewal Application: The business must submit a completed trademark renewal application via the UAE Trademark Office Portal before the 10-year validity period expires. The application should accurately contain details of the initial registration and renewal fees.
2. Payment of Fees: The applicant is required to confirm the payment of the fees associated with the renewal process as prescribed by the Trademark Law.
3. Notification of the Decision: Once the renewal application is submitted, it will be referred to the UAE Trademarks Department for consideration and examination. Subsequently, the business or the applicant will be notified regarding the renewal status of the application, either confirming or declining your renewal.
4. Official Publication: After the Ministry’s approval and successful payment of the renewal fees, the renewed Trademark is published in the Official Gazette/Trademark Bulletin, serving as a public notice of successful Renewal and continued use of your Trademark.
5. Issuing the Renewal Certificate: The period of issue of the Certificate by the Ministry of Economy is thirty (30) days from the date of publication. The renewal Certificate serves as official proof that the business has legally renewed the trademark and hence, they have exclusive rights over it for the next 10 years.

Required Documents-

• Power of Attorney: For a local company in the UAE or a legal resident of the UAE, a Power of Attorney shall be duly signed, notarized and issued in favour of the Trademark Agent acting on its behalf. However, for a natural or legal person outside the UAE, the Power of Attorney shall be legalized upto the UAE embassy.
• Trade License/ID Copies: A local company or UAE resident must submit a copy of their trade license and other ID copies of the representative concerned of such Company.
• Trademark Certificate: The Original Trademark Certificate issued by the Ministry of Economy.

Why Is Trademark Renewal Crucial for Businesses?

Timely renewal of a trademark offers several key advantages:

• Perpetual Registered Status: Renewal ensures the trademark remains valid, maintaining the brand’s legal protection.
• Continued Legal Protection: A registered trademark grants exclusive rights and legal protection against infringement. If infringement occurs, the trademark owner has the right to initiate legal action. By renewing your trademark periodically, the business can remain entitled to such rights and remain secure.
• Prevent Third Parties from Using Identical Trademarks: The renewal of your trademark prevents third parties and competitors in the market from employing similar or identical marks. These identical or similar marks, if used by counterfeit goods and services, can entail the potential in undermining your brand. It can also lead to the creation of confusion among valued customers. Hence, renewal acts as a legal defense in cases of infringement issues.
• Maintains Brand Reputation and Goodwill: A trademark for a business is its identity, and hence its reputation. Non-renewal can result in the loss of exclusive rights to use such trademarks. This can lead to the loss of trust among consumers, severely impacting your brand value and reputation. Renewal of your trademark is a commitment to maintaining your business’s identity in the market.

Penalty Charges for late or non-renewal of trademarks

Failing to renew your trademark within the grace period can cost your business very high penalty charges, which amounts to approximately AED 1,000/- for each month of delay.

Trademarks and their timely renewal are very crucial to a business, especially in a dynamic and highly competitive business space like the UAE. The trademark renewal can entail intricate and cumbersome processes calling for the assistance of a trademark expert or a legal professional for a right, timely and efficient approach. This ensures accurate legal compliance and untangling complications, thereby mitigating the risk of rejection and enabling your business to effectively enjoy your intellectual property rights.

Contributed by – Kripa Mariya