Why is it important to register trademarks in multiple classes in UAE?

A trademark registration provides many advantageous to the owner of a mark for a variety of reasons. In the first instance, it provides legal protection that ensures that the owner of a trademark can pursue infringement actions with the court and customs authorities in order to protect the trademarked products and/or services. Additionally, it helps to create recognition of the quality of the product with its customers. Customers often automatically retribute the quality of a product with its brand value. Thus, trademarks constitute an essential mechanism through which the proprietors can attract and maintain their customer base.

There are forty-five classification categories under which one can register their trademark in the United Arab Emirates, which follows the Nice classification (NCL) for international registration of trademarks. The Nice Classification, has been established by virtue of the Nice Agreement of 1957. It constitutes an international classification of goods and services applied for registration of marks and is updated regularly. Classes 1- 34 constitute the ‘goods’ classes, and the classes 35-45 constitute the ‘services’ classes.

In this article, we would like to share the various advantage of registering a trademark in more than one class:

• Gives more recognition: Registering your trademark in multiple classes allows further recognition for your trademark and the products and services that it represents. For instance, there might be different classes under the Nice classification that are confusingly similar to your product and services. By registering your trademark in all such classes, you gain more recognition for your mark as also avoid potential infringement.
• Prevents Infringement: By registering your trademark in more than one class, you can potentially reduce the infringement possibility by ensuring legal protection of the mark in more classes. This can be based on your choice of classes that are similar to your products and services. Most popular brands often go for registering their trademarks in all classes even though it might be an expensive option as this would avoid potential infringement and also to prevent competitors from registering similar products in certain classes.
• Avoids potential hassles of a later registration: A trademark registration process incudes procedures that include possible objections, advertisements and final publication. It is easier to proceed with all the steps of registering your mark in multiple classes in one go as a convenient step.

It is recommended to complete a thorough check for similar marks in your selected classes. This allows you to strategically choose the classes for which you wish to proceed with the registration. In case similar marks are already registered in your chosen class, then you may approach to change your trademark in some form in order to avoid potential infringement or costly application process that might be ultimately rejected. Generally, in various jurisdictions, a multi-class application can proceed as a single application. However, in the UAE, a single application cannot be filed for multi-class application and registration in each class has to be applied with individual applications.