Overview
A multi-class trademark application allows an applicant to seek protection for a trademark across multiple classes of goods or services with a single application instead of filing separate applications for each class. This approach is particularly relevant in the United Arab Emirates (UAE) where businesses often offer diverse products and services under one brand.
Until recently, UAE trademark law required a separate application per class, but the new Federal Trademarks Law No. 36 of 2021 introduced multi-class filings for the first time. In effect since January 2022, the law permits brand owners to register their trademarks in different classes through one filing, aligning UAE practice with international standards.
Requirements
Filing a multi-class trademark application in the UAE requires meeting certain documentation and legal criteria. Key requirements include:
- Application Details and Trademark Representation
A complete application must be submitted to the UAE Ministry of Economy, including the applicant’s details (name, address, etc.) and a clear representation of the trademark. If the mark is a logo or device, high-quality images are required; for word marks, the word or phrase must be provided in standard characters.
The application should specify the goods and services for which protection is sought and be categorized according to the Nice Classification system (the UAE uses the international Nice Classification for classes of goods and services). For example, a single application can list classes for both goods (Classes 1–34) and services (Classes 35–45) relevant to the mark. Each class in the application should be distinctly identified with the specific goods or services to ensure clarity of rights.
- Power of Attorney (PoA)
If the applicant appoints a trademark agent or attorney (which is common for foreign applicants), a signed PoA must be provided to authorize the representative. The UAE requires the PoA to be notarized and legalized and accompanied by an Arabic translation.
Under current practice, a simple signed PoA can be filed initially, but the legalized PoA must follow within 30 days of filing. This document is crucial for the agent to act on the applicant’s behalf before the UAE Ministry of Economy.
- Applicant Eligibility and Supporting Documents
Any individual or legal entity, whether UAE-based or foreign, is eligible to apply for a trademark in the UAE. There is no requirement for the applicant to be a UAE resident or to have a prior registration in another country. However, foreign applicants will need to file through a UAE-registered trademark agent using the above PoA.
In terms of documentation, a business applicant should provide a copy of their commercial license or incorporation certificate, and an individual applicant may need to provide identification. These documents establish the identity of the applicant. If priority is claimed from an earlier foreign application, details of that application and a certified copy of the priority document (with Arabic translation) must be submitted (within 6 months from the foreign filing.
Legal Considerations
The trademark itself must comply with UAE trademark law provisions. It should be distinctive and not deceptive or confusingly similar to existing registered marks. Prohibited marks cannot be registered – for example, marks that violate public order or morality, official symbols (flags, emblems, etc.), or names of third parties without consent are all barred by law.
Notably, the UAE has specific restrictions on certain goods and content that are in line with cultural and legal norms. Trademarks for alcoholic beverages (Class 33) or for pork products, for instance, have traditionally not been allowed under UAE practice. Applicants should ensure their mark does not contain or pertain to such excluded elements.
Additionally, if a trademark includes words in a language other than Arabic, a transliteration or Arabic translation of the term may be required for the record (to assist examiners and publication). All information in the application must be provided in Arabic or accompanied by an Arabic translation, as Arabic is the official language of the UAE trademark registry.
Process
The process of filing and registering a multi-class trademark in the UAE involves several steps, closely overseen by the Ministry of Economy’s Trademark Office. Below is a step-by-step breakdown of the procedure from application to registration:
- Application Submission
The applicant (or their agent) files the trademark application online via the UAE Ministry of Economy’s e-services portal. In this step, all required details are submitted, including the applicant’s information, a representation of the mark, and the list of classes and corresponding goods/services for which registration is sought. The official filing fees are paid at this stage (fees are typically calculated per class, so a multi-class application will incur fees for each class included). Once submitted, the Ministry assigns an application number and filing date.
- Formal Examination
The Ministry conducts a formal examination to ensure the application meets all administrative requirements. This includes verifying that the necessary documents (such as the PoA and any required translations) are in order and that the list of goods/services is properly classified. If any formality is lacking, the office may issue a request for correction or additional documents, which the applicant must satisfy (usually within a set deadline). Assuming the formalities are in order, the process moves to substantive examination.
- Substantive Examination
In the substantive examination, a trademark examiner reviews the application on legal grounds. The examiner will check for any conflicts with prior registered trademarks and assess whether the mark is inherently registrable (e.g., not generic or purely descriptive of the goods/services). They also ensure the mark does not contain prohibited matter as per UAE law. If the examiner finds grounds to object (for example, similarity to an existing mark or other non-compliance), an official examination report will be issued detailing the objections. The applicant then has an opportunity to respond, amend the application, or argue against the objections. If the trademark satisfies the examination (or once any objections are overcome), the Ministry will issue an acceptance decision.
- Publication
Upon acceptance, the trademark application is published for public notice. The Ministry will publish the accepted application in the Ministry’s Bulletin. Under the new law, publication in two local newspapers – which was required in the past – has been eliminated, simplifying the process. The publication includes details of the mark, the applicant, and the classes of goods or services. This public record serves to alert any interested parties of the pending registration. Fines shall be imposed in the event of delay in payment of publication fees after 30 days from the date of receipt of the acceptance decision.
- Opposition Period
After publication, there is a statutory opposition period of 30 days during which third parties may oppose the trademark application. The opposition period allows anyone who believes the mark’s registration would damage their prior rights (for instance, owners of a similar earlier trademark) to file an opposition. An opposition is filed through the Ministry of Economy, and it triggers a legal proceeding where the opposing party and the applicant present their arguments and evidence. The case may be reviewed by a Trademarks Committee or the courts as per the procedures set by the law.
If an opposition is filed, the registration of the mark will be put on hold until the dispute is resolved. The applicant can contest the opposition; if the opposition is decided in the applicant’s favor (or if the opponent withdraws or fails to proceed), the application can move forward to registration. If no opposition is filed within the 30-day window, the application proceeds automatically to the next stage.
- Final Registration and Certificate
If the opposition period passes with no opposition (or once any opposition is resolved and the application is allowed to continue), the trademark is ready for final registration. The applicant will be required to pay the Ministry registration fee. After payment, the Ministry records the trademark on the official register for all the approved classes. Fines shall be imposed in the event of delay in paying the final registration fees after 30 days from the end of the objection period.
A Certificate of Registration is then issued to the applicant, formally confirming the trademark’s registration in the UAE. The trademark is now a registered mark, granting the owner exclusive rights to use the mark for the listed goods/services within the UAE. The registration is effective from the filing date and is valid for 10 years from that date. The owner can renew the trademark indefinitely for an additional 10-year period, with renewal applications to be filed in the final year of the current protection period (a grace period for late renewal, with a fine, is also provided by law.
Throughout this process, the Ministry of Economy may communicate with the applicant/agent for any requirements or updates (for example, issuing the examination report or acceptance notice). The overall timeline for smooth trademark registration in the UAE (multi-class or single-class) can range from around 8 to 12 months from filing to registration, assuming no major objections or oppositions. Delays can occur if there are objections to address or if oppositions arise. Once registered, the multi-class trademark affords its owner protection across all the classes included, under a single registration number, simplifying enforcement and future management of the trademark.
In summary, the introduction of multi-class trademark applications in the UAE is a welcome development for brand owners. It aligns UAE practice with international norms and provides practical advantages in cost savings, ease of administration, and robust protection of intellectual property. Businesses and legal professionals in the UAE can now leverage multi-class filings to efficiently protect trademarks across all relevant markets, ensuring their brands are well-guarded as they grow. This modernized approach to trademark registration ultimately supports better brand management and protection among thousands of businesses in the UAE.
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