News & insights

UAE: Changes in the Examination Formalities

May 26, 2014

The UAE Trademark Office (TMO) has issued on May 19, 2014, Decision no. 3 of 2014 (to be implemented as of June 1st, 2014) stating that it will no longer issue pre-examination decisions or grant extensions of time during the trademark examination process. Only acceptances, conditional acceptances and rejections shall be issued in the country. In other words, the trademark applications will be either accepted, accepted under a condition or rejected, while examination will continue to be based on both absolute and relative grounds.

The difference between the current procedure and the new one is summarized in the following table:

Current procedure 

New procedure

The examiner issues pre-examination decisions requesting amendments or clarifications. Applicants can respond to the pre-examination decisions. 

Pre-examination decisions cover mainly the following three areas:
  

 

No pre-examination decisions can be issued and therefore applicants will no longer be able to respond to the examiner.

The applicant may only appeal the decision or re-file a fresh application with the required amendments; the latter is recommended since appeals might take a long time.

1. The list of goods/services claimed. 

1. Any discrepancies in the list of goods/services will result in a rejection decision; it is recommended to always claim class headings (as per the 10th edition of Nice classification which is adopted in the UAE).

2. The distinctiveness of the subject TM.  

2. Lack of disctinveness will result in a rejection decision; it is recommended, when and if possible, to file as part of the application, evidence in support of the distinctiveness of the TM, hoping that the examiner will consider the same during the examination.

3. The existence of prior rights. 

3. Prior rights will result in a rejection decision; it is highly recommended to always clear the TM before filing (by conducting both official and un-official searches) and in the event of existing prior rights, proper advice can be given on the best course of action to prevent rejection (i.e. submit along with the application evidence showing relationship between the owners – co-existence agreement – letter of consent etc…).