UAE: Class 33 now open for trade mark registration

For many years, obtaining trade mark protection for alcoholic beverages in Class 33 in the United Arab Emirates (“UAE”) presented a challenge for brand owners. Restrictions on the registration of marks for alcoholic beverages meant that businesses operating internationally could find themselves with an important gap in their UAE portfolio, despite having protection for the same goods elsewhere.

A change in approach

The acceptance of Class 33 means that brand owners can now seek trade mark protection for alcoholic beverages in the UAE.

Previously, the inability to secure Class 33 protection could require brand owners to adopt alternative filing strategies, potentially leaving the scope of protection in the UAE misaligned with the rest of their international portfolios.

The new position provides an opportunity to reconsider those strategies and, where appropriate, align UAE protection more closely with the goods for which a brand is actually used or intended to be used.

Time for a portfolio review

The immediate question for existing brand owners is whether their UAE portfolios now have gaps that can be addressed through Class 33 filings.

Businesses should review marks where they were previously unable to obtain protection for alcoholic beverages and assess whether new applications are appropriate. Existing portfolios should also be considered alongside the brand's wider international filing strategy.

However, filing is only one side of the equation.

The opening of Class 33 is likely to generate increased filing activity. This makes trade mark watching particularly important for businesses with established beverage brands or plans to expand in the UAE.

A new filing that might previously have been impossible may now be made by a third party. Early identification of potentially conflicting applications will therefore be important in allowing brand owners to consider whether opposition or other action is appropriate.

Don't assume the GCC is moving together

The position regarding alcoholic beverages is not uniform across the GCC (“Gulf Cooperation Council”). Restrictions remain relevant in other jurisdictions, including Saudi Arabia and Kuwait, meaning that the availability of Class 33 protection in the UAE should not be treated as evidence of a broader regional change.

For businesses operating across the Gulf, this reinforces the importance of taking a jurisdiction-specific approach to trade mark strategy, rather than adopting a single GCC filing plan for alcoholic beverage brands.

What should brand owners be doing now?

For brand owners with interests in the alcoholic beverages, luxury, or hospitality sectors, this is a timely opportunity to review their UAE trade mark portfolios.

In particular, businesses should consider:

1. Identifying gaps in protection - Review whether key brands currently have no direct UAE protection for Class 33 goods.
2. Reviewing existing strategies - Consider whether previous alternative filing strategies remain appropriate in light of the availability of Class 33.
3. Assessing international portfolios - Consider whether UAE specifications should now be brought more closely into line with the brand's wider international trade mark portfolio.
4. Reviewing watching arrangements - Ensure that relevant Class 33 applications are being monitored so that potentially conflicting marks can be identified promptly.

Key takeaways

The opening of Class 33 is a useful reminder that trade mark portfolios need to evolve alongside commercial and regulatory developments.

For international brands, the value of this change is not simply the ability to file in a new class. It provides an opportunity to revisit historic gaps, bring protection closer to the reality of the business, and ensure that brand monitoring keeps pace with the changing filing landscape.

For businesses with alcoholic beverage interests in the UAE, a portfolio review now could therefore be worthwhile.

If you have any questions regarding this article or would like some professional assistance with the recommended actions above, please don’t hesitate to get in touch with the author Amelia Skelding or call +44 (0)1332 367 051.