If a party wants to cancel a registered trademark in the UAE, must it first file a cancellation request with the Ministry of Economy? Or can it go directly to the Commercial Court? And if it chooses the latter, could the claim be dismissed for failing to follow a mandatory procedure?
These questions have recently been considered by the Dubai Court of Cassation in several judgments issued in 2026. In particular, Commercial Appeals No. 1729 of 2025, No. 148 of 2026 and No. 270 of 2026 provide useful guidance on an important distinction: filing a substantive trademark cancellation action before the court is not the same as challenging a decision already issued by the Ministry of Economy.
The General Rule: A Cancellation Action Can Be Filed Directly Before the Court
The Dubai Court of Cassation addressed this issue in Commercial Appeal No. 1729 of 2025, issued on 4 February 2026.
In that case, the Court of Appeal had dismissed a trademark cancellation action as inadmissible because the claimant had not first approached the Ministry of Economy. The Court of Cassation overturned that judgment.
The Court explained that the inadmissibility provisions under Articles 13 and 24 of the UAE Trademark Law, for failure to file a prior grievance, presuppose that there is already a decision issued by the Ministry of Economy that can be challenged through the grievance procedure.
In other words, the fact that a party wants to cancel a registered trademark does not, by itself, mean that it must first apply to the Ministry before bringing a cancellation action before the court.
The Court confirmed the same approach even more clearly in Commercial Appeal No. 270 of 2026, issued on 11 March 2026, stating that:
“The legislator did not subject an action seeking cancellation of a trademark to any prerequisite before filing it.”
The Court further explained that inadmissibility for failure to file a grievance requires the existence of a prior Ministry decision concerning the refusal of registration, suspension of registration, cancellation of the trademark, or refusal of a cancellation request.
Read together, Appeals 1729/2025 and 270/2026 establish a clear principle: an interested party may bring a substantive action directly before the court seeking cancellation of a trademark registered without right, without first having to file a cancellation request with the Ministry of Economy.
When Does a Grievance Before the Ministry Become Mandatory?
The position changes where the Ministry of Economy has already issued a decision.
Under Articles 13 and 24(7) of Federal Decree-Law No. 36 of 2021 on Trademarks, where the Ministry issues one of the decisions specified by the law and a party wishes to challenge that decision before the court, the party must first file a grievance before the Ministry’s Grievances Committee.
At that point, the grievance is a mandatory procedural step. Failing to follow it may result in the court action challenging the Ministry’s decision being declared inadmissible.
Put simply, there is a significant difference between asking the court to cancel a trademark that was registered without right and asking the court to overturn a decision already issued by the Ministry of Economy concerning that trademark.
In the first situation, a direct court action is available. In the second, the statutory grievance procedure must first be followed.
What If the Trademark Is Registered While the Court Case Is Already Pending?
Commercial Appeal No. 148 of 2026, issued on 19 February 2026, dealt with a somewhat different procedural situation.
The original proceedings concerned, among other things, cancellation of a trade name and cessation of infringement of an earlier trademark. While the case was pending, the defendant obtained registration of the disputed sign as a trademark. The claimant then amended its claims to include a request to cancel the newly registered trademark.
In those particular circumstances, the Court of Cassation held that the claimant should have followed the prescribed procedural route in relation to the new registration and sought a stay of the pending proceedings until that process had been completed and determined.
The Court also emphasized that where the law prescribes a particular litigation procedure, compliance with that procedure is a matter of public order, and failure to follow it may result in the claim being declared inadmissible.
This does not necessarily conflict with Appeals 1729 and 270. Appeal 148 concerned a particular procedural situation: the trademark did not exist as a registered trademark when the proceedings were commenced. It was registered during the litigation, after which a new cancellation claim was added to the existing case.
Appeals 1729 and 270, by contrast, directly addressed whether a substantive cancellation action against an already registered trademark requires a prior application to the Ministry of Economy.
Conclusion
The recent Dubai Court of Cassation judgments provide an important practical distinction.
As a general rule, a substantive action seeking cancellation of a trademark registered without right may be brought directly before the Commercial Court. A prior cancellation request before the Ministry of Economy is not, in itself, a condition for the admissibility of such an action. This principle was clearly confirmed in Appeals 1729/2025 and 270/2026.
The position is different where the Ministry of Economy has already issued a decision that a party wishes to challenge. In that case, the grievance procedure before the Grievances Committee becomes mandatory where required by law, and bypassing it may lead to the court action being declared inadmissible.
Appeal 148/2026 adds another important consideration: the procedural position may change during pending litigation, particularly where the disputed trademark is registered only after the case has already been filed.
Therefore, before commencing a trademark cancellation action, the key question is not simply whether the trademark is registered. It is necessary to identify the nature of the claim: Is this a direct substantive cancellation action? Is it a challenge to a Ministry decision? Or has the trademark registration arisen during pending proceedings?
That distinction determines the correct procedural route and, in some cases, may determine whether the court reaches the merits of the dispute at all.
At DeMark Legal Consultancy & IP Services, we assist businesses across the UAE and the MENA region with trademark clearance, registration, enforcement, and dispute resolution.
For all inquiries, questions or for more detailed description of our services please visit our website
Website: www.demarkip.com
Email: info@demarkip.com