01. Seek Professional Guidance:
Applying for a Trademark is a complex process. We highly recommend that you reach out to an IP specialist who can help you through the process to increase the chance of your application being accepted.
02. Make Sure Your Mark is Distinctive:
Be unique in your market so that your customers can easily identify you. The chosen identifier will make you recognizable and ensure your customers make informed decisions.
03. Use the ™ Mark Before Registering:
This symbol signifies to others that you own the mark but are yet to register it. Once you have registered the mark you can use the ® symbol.
04. Funding and Budgeting:
Decide on the money needed for filing fees, legal assistance, and any other costs to make sure your finances run smoothly. This activity should be visited throughout your preparation and application process.
05. Strategic Decision-Making:
Decide on the marks that are most relevant to your market and which ones you want to register. Consider the geographical scope of protection (national, regional, international) alongside the classification you wish to use.
Use the pre-application checklist linked below or read through the outline here to understand the steps you should take before moving into the application process.
Please note, this checklist is not exhaustive and doesn't replace advice from IP experts.
01. Search Existing Trademarks:
Look for other companies and brands like yours by doing a thorough search through trademark databases from various sources to ensure your mark is sufficiently unique.
02. Determine the Classification:
The Nice Classification (NCL), is an international classification of goods and services applied for the registration of marks. In order to register your mark, it’s essential to identify which classification(s) your mark falls into. You can find the list of goods and services on WIPO and the Classes description here (detailed in both Arabic and English) It is possible that you may need to file in more than one class of goods and/or services in order to fully protect your commercial interests.
03. Trademark Ownership:
Decide on who owns the mark, this can be an individual, partnership, company, owners of a company, or other legal entities.
04. Look Through Application Form:
Look through the forms for your Trademark application from the MoEc to learn about what information and documents you need.
Using this Pre-Application Checklist before applying for a Trademark helps you understand the steps you should take before applying to register your mark, its market viability, and any legal considerations you may have to undertake. It's important to note that this checklist is not comprehensive and should not substitute advice from an IP Attorney.
Trademarks are used to identify and protect brands, ensuring that customers can easily recognize products they like and trust. This means that they need to be distinctive in relation to the goods and services.
For example, “Milk” is a type of dairy product so it cannot be used as a trademark for dairy goods as it won’t be distinctive enough from other dairy brands. However, “Milk” can be used as a brand for motor cars as it can be considered distinctive enough.
In the UAE, trademarks are registered per word, image, or any other type of identifier. If your brand name has marks for Arabic and English, these need to be registered separately. Take care to consider what best suits your business strategy and market needs.
The UAE uses Nice Classification to separate goods and services into different categories. It is a widely recognized international system administered by WIPO for the purpose of trademark registration. Each application you make can only be filed with one classification. It is important to have a classification that best aligns with your business and strategy. The full list of classification may be found on WIPO.
In the UAE and other countries, if a registered mark is not used for a certain period (in the UAE 5 uninterrupted years) it can be canceled in full or in part. It is a case of "use it or lose it".
In the UAE, using a city or country’s name will lead to your application being rejected. For instance, the brand name “Dubai Toys” for a toy manufacturing company will likely lead to your trademark application being rejected. This would be the same for the names of any other city or country name.
A key activity you should undertake before starting your Trademark application is searching for existing Trademarks.
The primary reason for this is to check that your mark is unique, and will not be infringing on any existing Trademarks. This includes your mark being too similar to others.
Find out more about where and how to search below:
Check different Trademark dates to make sure your results are comprehensive. Explore MoEc, as well as WIPO and other databases. Doing a simple Google search can also help.
Here’s a straightforward guide to conducting a thorough and effective trademark search, ensuring you accurately navigate through existing trademarks:
01. Define Your Brand’s Identity:
Pinpoint what makes your brand unique—its name, logo, or slogan—and use this as your search foundation.
02. Goods or Services of Interest:
What are you looking to use the brand for in terms of products and or services, as this is important. If someone is using or has registered in a very different area, this may not necessarily be a blocker to your use.
03. Use Keywords Wisely:
Create a list of keywords related to your brand’s unique elements. Think of variations and synonyms for a comprehensive search.
04. Refine and Filter:
Apply filters like trademark class, status, or owner to narrow down search results, making them more relevant to your brand.
05. Understand Classification Systems:
Understand the classification system relevant to your brand to fine-tune your search. Search within your desired classification and any adjacent ones.
06. Explore Beyond Trademarks:
Expand your search to include online databases, social media, and domain names to uncover any unregistered but potentially conflicting trademarks.
07. Consult an IP Attorney:
Considering the complexity of trademarks, consulting with an IP Attorney can provide invaluable insights and guidance, ensuring your brand is well-protected.
08. Keep Records:
Document all your search efforts, including keywords used and potential conflicts identified. This will be crucial for your trademark application and future reference.
While a search may result in you having to consider an alternative brand, it will be more cost-effective and less damaging to your business to move to an alternative brand before launching, than afterwards.
Searching existing Trademarks can be a difficult task to undertake. IP Attorneys have training and experience to conduct the search process well.
Look through our UAE IP attorney registry to find the most suitable one for you. Seeking legal support at the early phases of your IP journey will only streamline the process and decrease the chances of your application being refused.
Getting through the trademark application process needs careful attention and following specific rules from MoEc or DED. Make the process easier by gathering and submitting the necessary documents.
You can find a list of important documents, in the form of a checklist, for a successful Trademark application by clicking the link below:
Note: All documents must be submitted in both Arabic and English - However, Arabic translations can be filed up to 90 days after initial submission in English.
Below are the steps, timelines, and expenses associated with Trademark applications. The process is segmented into pre-application, application, and post application phases, with varying durations and costs based on your idea's complexity, application quality, and chosen support level.
