The UAE trade mark framework provides a mechanism for challenging registrations on the grounds of non-use. While the legal requirements for cancellation are generally familiar to trade mark practitioners, understanding how evidence is assessed in practice can be equally important when advising brand owners on their prospects of success.
Rather than revisiting the statutory grounds for cancellation, this article shares practical insights from our recent experience handling non-use cancellation matters in the UAE, particularly the approach of the Trade Mark Cancellation Committee to evidence, the implications of a registered owner's failure to respond, and the factors that may influence its decisions.
Does a failure to respond mean the cancellation will succeed?
A frequently asked question is what happens when a registered trade mark owner does not respond to a non-use cancellation application.
From our experience and discussions with the IP section at Ministry of Economy and Tourism, the absence of a response does not necessarily result in automatic cancellation. The Committee may still assess the case and reach a decision based on the overall circumstances and information available to it, even where the registered owner has not submitted a defence or evidence of use.
While the absence of a response may favour the petitioner, it should not be treated as a default judgement to cancel the registration. Cancellation cases should be properly supported and address the relevant statutory requirements. Do not rely solely on the registered owner's failure to respond.
Is renewal of a registration be treated as an indication of use?
In a recent case, the registered owner had not responded to the cancellation. The cancellation was nevertheless rejected by the Committee, who considered the renewal of the registration as an important consideration in the assessment. The Committee reasoned that a trade mark owner would unlikely incur the cost of renewing a registration unless the mark remained commercially relevant or was being used. This provides an interesting insight into how renewal may feature in the Committee's assessment of the wider circumstances.
However, in our view, renewal and actual use remain distinct considerations.
Renewal is an administrative step that maintains a registration. It does not, by itself, demonstrate that the mark has been genuinely used in the market for the relevant goods or services during the applicable period.
A trade mark owner may renew a registration for several reasons, including preserving future commercial plans, maintaining a defensive position or retaining an existing portfolio, without necessarily using the mark. Accordingly, while renewal may be considered as part of the surrounding circumstances, we believe it is important to distinguish it from evidence establishing actual use.
This distinction becomes particularly relevant where the registered owner has not submitted evidence of use and the cancellation decision appears to rely significantly on the fact that the registration was renewed.
Looking beyond the evidence submitted by the parties
Another observation is that the Committee's assessment may not necessarily be confined to the documents submitted by the parties.
Our experience suggests that the Committee may consider information available from other sources, including online checks, when reviewing the circumstances surrounding a registration.
Where additional information influences a decision, understanding its nature and relevance can also be important when assessing the outcome and any potential challenge.
Keeping the focus on the relevant cancellation grounds
We have also observed that certain cancellation decisions may refer to broader considerations, including differences between the parties' marks or their ability to coexist.
Such considerations may be relevant in other types of trade mark disputes, particularly those involving relative grounds for refusal or likelihood of confusion. However, in a cancellation action based on non-use, the central question is whether the statutory requirements relating to use of the challenged mark have been satisfied.
In our view, it is important to distinguish these different legal considerations when evaluating a cancellation decision.
Practical considerations for brand owners
Our recent experience highlights several points worth considering when preparing or defending non-use cancellation cases:
As practice continues to evolve, understanding how the Committee assesses evidence will be increasingly valuable in helping brand owners navigate non-use cancellation proceedings and manage expectations.
