Over the past quarter in 2021, 40,000 rejections were issued on international applications worldwide. Japan, USA, China and Canada made up 37% of these rejections. Rejections, refusals and office actions are issued for many reasons but are there mainly to protect brand owners with prior registrations and consumers alike.
On the 28th of September, the UAE announce that it has acceded to the Madrid system for international registrations of trademarks, which is great news on one hand to allow UAE companies to protect their trademarks in international countries efficiently, however on the other end whether the UAE will apply extensive examination procedures different than the current procedures used is a mystery which we will find out.
At the moment, internal capacity building should be taking place in order to allow knowledgeable local examiners to train on the international system, and we will keep you updated on the progress.
Whether the UAE will be like the Japan, the USA or Canada issuing irregularity notices and requiring very precise wordings or whether it would be like Bahrain where examinations are high level with only a couple of refusals issued each year is yet to be known.
On that note, we have seen a tremendous shift in the Oman examination process, and the number of examinations receiving office actions or refusals from Oman has increased. During Q3 2021 Oman ranked 3rd in terms of Arabic countries issuing refusals, and that is only in an absolute number sense not in terms of the percentage of applications designated, which we expect to be much higher percentage than Algeria and Egypt which occupied the 1st and 2nd position in terms of number of refusals issued.
In Oman Over the past quarter, 70% of refusals related to association conditions, 15% related to oppositions and 15% related to substantive trademark examination procedures.
When requesting the association condition, the trademark office in Oman sites Articles;
- Number 38 of the industrial property law no 67/2008 and
- Number 54 of the industrial property law’s implementing regulations no 105/2008 and
Background of the association condition:
The association condition requires the trademark owner to associate previously filed trademarks which are similar/identical trademarks. The reason for this request is to avoid any public confusion as to the source of products or services which the trademark is displayed on, therefore disallowing the ownership of the same mark by 2 different entities.
Associating trademarks is a relatively straight forward rejection to overcome, however it does entail additional official fees to associate the trademarks and potential risks if the trademarks being associated are still under process.
Feel free to reach out to one of our experts in trademarks, Oman and all the MENA region for maintaining your international trademark applications and responding to rejection.
