TMCnet Feature
March 31, 2021

How to Register a Trademark and Patent of an IT Company

A lot of IT companies see the advantages of trademark registration in UAE. With hundreds of thousands of customers, both existing and potential, it makes sense to start the process of UAE trademark registration. While the process in registration a trademark and patent in UAE can seem very overwhelming at first, it is not as complex and challenging as you think. Simply follow these steps in registering your IT company's trademark and patent in UAE:

Step 1: opt for a strong mark.

A trademark is any logo, name, or symbol which represents your unique brand. Within the UAE, logos, business names, color schemes, and even slogans can be registered as trademarks and provide the trademark holder or owner intellectual property (IP) rights. The strength of a trademark is determined by the mark's distinctiveness or uniqueness. A strong trademark is very easy to enforce in the country for the trademark holder's exclusive use. A trademark can be divided in several different categories which are based on their uniqueness:

  • Fanciful - a fanciful mark is the strongest kind of trademark. It is an invented work without any connection to a service or product that's offered by an IT company in UAE. Examples of fanciful marks include Pepsi and Kodak (News - Alert).
  • Arbitrary - an arbitrary mark is a familiar word that doesn't have any relation to a good or service that is offered by an IT company in UAE. An example is Apple (News - Alert) or Amazon. An arbitrary mark is also considered strong; however, it is not as strong as a fanciful mark. It will also require additional marketing costs for the IT company in order to educate clients regarding the business and the services that are offered.
  • Suggestive - a suggestive mark provides a hint of goods and services which are offered by a business without having to explicitly state them. A well-known example is Burger King. Although it is slightly strong, it can be challenge to prevent any similar mark from getting registered and given trademark rights in UAE.
  • Generic and descriptive - these words simply describe products or services which an IT company in UAE offers. The UAE Ministry of Economy usually don't approve generic and descriptive words as they can be very hard to enforce for exclusivity or exclusive rights. One example would be a hair salon for men called Hair Cuts.

Step 2: Commission a trademark specialist.

According to UAE trademark registration, all those that wish to gain IP rights for a trademark in UAE can apply directly with the Ministry of Economy or choose to hire a trademark specialist. Working with a professional will help ensure your application for trademark registration in UAE adheres to guidelines set by the local authorities. A professional can also ensure that the process is smooth and help you experience little to no problems with the application. While not all trademark professionals are legal advocates in UAE, it's going to be best if your chosen trademark specialist in UAE has extensive experience with the registration and enforcement of trademarks in UAE.

Apart from adhering all policies, working with experienced trademark specialists in UAE has additional benefits. A lot of legal decisions have to be made in the course of the registration process, starting from the trademark search that needs to be thorough up to choosing the correct classifications or classes of products and services, as well as responding to inquiries of the Ministry and cancelations or oppositions.

For someone that does not have any trademark registration experience, all these tasks can become time-consuming, overwhelming, and very expensive from correcting errors in the application. Partnering with experts will ensure your registration application is processed as smoothly and quickly as possible while you're continuing your business growth or expansion in UAE.

Step 3: File the trademark registration application.

Your trademark specialist in UAE will conduct a thorough trademark search to check if there are similar marks that are already registered in UAE. If there is none, then you can move on to the filing of the registration application. Most common way of submitting a trademark application is filing directly with UAE Ministry of Economy. They have a website where you can submit the application form together with their request documentation. Take note: you would also have to pay the application fee and it is non-refundable even when your application gets rejected. After completing the filing of your application, you'll receive an application number. You can then proceed to another phase of the trademark registration.

If your strategic plan for trademark registration includes trademark registrations in other countries as well, then you may need to consider another application process. There is an international treaty, the Madrid Protocol, which allows the registrants in completing one registration application in a chosen language which can be applied onto more than ninety member countries. This will streamline your international trademark registration application process. But you should remember that this won't guarantee the fact that your trademark will get approved in the UAE. The decision in approving and rejecting applications for trademark registrations is still at the hands of the UAE Ministry of Economy.

Tip: Respond to the requests and inquiries of the Ministry asap.

As soon as you've filed the trademark application, you -need to make sure that you can be contacted by the Ministry of Economy for various reasons and at whatever day of the week. For instance, an examiner who was assigned in reviewing your application may require more clarification or have questions regarding certain aspects of your registration application. All that's needed usually is verification of the information through a phone call or email. However, it is also possible that you will get a more formal notice for the issue. The Ministry will only give a certain amount of time for you to respond to all of the concerns of an examiner. Should you not reply on time, you will risk having the registration of your trademark cancelled or rejected.

After the examiner approves of the trademark application, your mark will then need to be published in two local newspapers. If there is any business or legal entity that opposes to the registration of your trademark when it appears on the local newspapers, you'll have a certain amount of time to complete an opposition or appeal. It is imperative, again, that you respond prior to the set deadline given by the Ministry. It will ensure your application process moves forward with registration.

There can be a lot of complications that pop up throughout the process of registering a trademark in UAE. Seek the help of experts like Farahat & Co for a smoother and simpler experience of trademark registration.

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