Under the current UAE Trade Mark Law, amendments to an existing trade mark registration are permitted post registration. These amendments can be made to the mark, the name/address of the registrant or the specifications. This circular addresses the amendment of specifications post registration.
Under general trade mark principles, post-registration amendments should not expand the scope of protection originally granted, whether in terms of the specifications or the trade mark itself.
Article 19(1) of the UAE Trade Mark Law allows for both additions and deletions to specifications, as long as these modifications do not “fundamentally affect the identity of the mark”. The final approval for any changes rests with the Trade Mark Office (TMO).
In practice, the TMO allows specification amendments, including additions, provided they remain within the scope of the class. However, we believe that amendments that broaden scope of specifications could be subject to future challenge.
Therefore, we are preparing to raise the amendment of specifications post-registration with the TMO to ensure they are aware of the potential challenges and take steps to avoid approving any amendments that would expand the scope of protection of existing registrations.
The information in this article is for general informational purposes only and should not be considered as professional or legal advice. Please get in touch with us should you like to discuss further.
