Federal Decree-Law No 36 of 2021 (“Trademarks law”), amply provides for the protection of well-known marks. Article (4)(1), says that if a popularity of a mark has crossed the boundaries of a country where it was registered, any same or similar mark would not be registered for identical or similar goods or services unless the owner consents to such registration.
Article (4)(2) lays down the criteria as to what constitutes a well-known mark. It is assessed on the basis that:
- The mark should be known to the relevant public.
- Duration of its registration and use.
- Number of countries it is registered in or is held to be well-known.
- Monetary value ascribed to it.
- Its extent of influence on the promotion of goods or services.
Further, Article (4)(3), provides that in the following two scenarios such trademarks are not likely to be registered in relation to the goods or services that are dissimilar to those distinguished by these trademarks.
- If the use of such a mark conveys a connection between the goods or services offered by the owner of a well-known trademark.
- If the use of such a mark would, in any way, cause harm to the interests of the owner of the well-known trademark.
Convention provisions
UAE is a member of the Paris Convention for the Protection of Industrial Property as well as the World Trade Organisation (WTO). As per Article 6 of the said Convention:
“A trademark which constitutes a reproduction, an imitation, or a translation of a well-known mark and which is liable to create confusion among the public and used for identical or similar goods to which well- known trademark applies shall not be entitled to be registered and use of such kind of mark must be prohibited”.
Further, Article 8 provides that “A trade name shall be protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of a trademark”.
It is apparent that the Trademarks law of UAE has been promulgated keeping in view the above provisions of the convention.
Case law
In an interesting case in the Emirate of Dubai, the Hon’ble Court of Cassation, i.e., Federal Supreme Court in the Country, safeguarded the interest of the owner/s of a well-known mark HARRODS London, United Kingdom.
Facts of the case
- HARRODS LIMITED (“HL”), a well-established company in the UK, became aware that there were two local Dubai companies i.e., Harrods General Trading (“HGT”) and Harrods Tourism (“HT”), using the mark/name HARRODS without authorization.
- In April 2005, HL filed a lawsuit before the Hon’ble Court of First Instance. While contending abuse of their mark, HL also invited the Hon’ble Court’s attention to Article 8 of the Paris Convention on Protection of Trade Name/s.
- As a counterblast, the Dubai-based companies filed a counter-suit seeking cancellation of the registration of the HARRODS LONDON trademark. The ground/s taken was that it had not been used for five successive years.
- The main contention/s relied on by the Dubai-based entities was that HL was based in London, and even though it was registered with the Ministry of Economy, the business of the two establishments, covering tourism and general trading, was totally different. HL’s trademark is not known to the people of the UAE. The only awareness people have about it is that it is based in London. Hence, the reputation of the trademarks abroad is not to be extended to other countries.
- The Hon’ble Court of First Instance did not accept the contentions. Instead, it passed a restraint order against them to altogether stop the use of the offending name HARRODS. It also ordered the de-registration of the Dubai entities from the official records.
- They went in for an appeal before the Hon’ble Court of Appeal which was also dismissed.
- Thereafter, they took the case before the Hon’ble Court of Cassation. The Hon’ble Court, in its final judgment, ruled in favor of HL contending that the impugned name/s HARRODS is a blatant copy of an internationally famous mark and that it contains no distinguishing element.
In conclusion
UAE has a robust and progressive trademark law that provides for protecting the interest of the owner/s of well-known trademarks. Such a legislation, in the coming years, would certainly nurture confidence in international businesses to invest in the country and use their brands for products and/ or services without fear of losing their distinctiveness because of any unfair trade practices.
Written by Rajiv Suri, Senior Associate – IP and Corporate, Alsuwaidi & Company LLC
