Under the current UAE Trademark Law, after a trademark is approved for registration, the registrant can modify the trademark itself, the name/address of the registrant, and the goods/services. This article discusses the modification of goods/services after trademark registration.
According to the prevailing principles of trademark law, any modification of a trademark after registration should not expand the scope of protection originally granted to the trademark, whether it is a modification of the goods/services or a modification of the trademark itself.
Article 19, paragraph 1 of the UAE Trademark Law states that the addition or deletion of goods/services is permitted provided that such changes do not “fundamentally alter the essential characteristics of the trademark.” All changes are subject to final approval by the Trademark Office (TMO).
In practice, the TMO allows modifications to goods/services, including the addition of new items, as long as they do not exceed the scope of the original registration category. However, we believe that modifications intended to expand the scope of goods/services may face challenges in the future.
Therefore, we plan to have in-depth communication with the TMO on the modification of the goods/services list after trademark registration to ensure that the official is aware of possible problems and takes measures to avoid approving any modifications that may expand the scope of protection of the existing registration.
The information provided in this article is for reference only and does not constitute professional or legal advice. If you would like to discuss further, please contact us.
For further information, please contact:
Mona Saleh, Rouse
msaleh@rouse.com
