Evaluation of Civil Protection Provided by Trademark Law

Trademarks and Registration
under United Arab Emirates
Law
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TABLE OF CONTENTS
Introduction......................................................................................................................................3
Trademark law of UAE....................................................................................................................3
Legal terminology........................................................................................................................5
The Federal Law No. 37 of 1992 on Trademarks........................................................................5
Fame provisions in Trademark Law............................................................................................6
Issue of Trade names vs Trademarks...........................................................................................9
Paris convention (1883).............................................................................................................11
Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement (1994)................13
Conclusion.....................................................................................................................................15
References......................................................................................................................................16
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INTRODUCTION
Trademark is a recognizable sign or mark which provides distinct identity to the goods
and services in the market. In present era, vital importance has been provided to the trademarks
because it creates immense addition to the value of business and commercial transactions. It is
because; these marks have substantial impact on public and influence their purchase decisions
due to factor such as brand loyalty 1. By considering this aspect, legislation had developed
specific provisions to provide protection to the intellectual property from the act of infringement.
United Arab Emirates is considered to be world's premier trading hub. Thus, government
authorities had developed effective regime for the protection of business as well as customers 2.
Further, they had developed standards for brand owners’ rights for effective protection at both
domestic and international level.
Present study is focused on evaluation of civil protection provided by trademark law in
UAE to the well-known trademarks. For this aspect, description will be provided regarding the
Federal Law No. 37 of 1992 on Trademarks. This description will be supported by amendments
taken place in 2000 and 2002 with particular reference to international treaties such as Paris
convention (1883) and TRIPS Agreement (1994). For better understand, evaluation of law will
be referenced by previous case studies and opinion of legal experts and scholars on it.
TRADEMARK LAW OF UAE
Trademark law is important legislation developed for the protection of intellectual
property in UAE from the act of infringement. This legislation is governed by provisions
described under The Federal Law No. 37 of 1992 on Trademarks. These provisions were
introduced by Late Sheikh Zayed bin Sultan Al Nahyan. He had recognised the importance and
benefits of protection provided through provisions of trademark for prosperity of local economy.
With the changing environment and operation activities, this law has amended by introduction of
Law No. (19) of 2000 and Law No. (8) of 2002. This legislation provides protection in UAE for
1 A., J. Iqbal, Mohammad and Z. Tariq ,. 'The Gulf Cooperation Council (GCC) Trademark Law and its
Impact on Current Saudi Trademark Law and Practice.' Available at SSRN 2691888 2015.
2 M. Teotia and T. K. Bandyopadhyay 'Applicability of Tort Law for Protection of Trademark.'
Intellectual Property Rights. 2015.
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the registered trademarks. Objective of this legislation is to protect the interest of businesses as
well as customers in the country. In this law description is provided regarding definition of
trademarks and conditions to be satisfied for its registration.
Trademark law in UK sets a comprehensive regime in order to govern norms of providing
protection to unique marks related to goods and services. In this aspect, benefit and legal
protection is granted to the trademark owners along with the duty for renewal of protection after
completion of time3. Rules and regulations covered in this law also provides mechanism for the
registration procedures and sets out the consequences for the act of infringement of such marks.
In accordance with the provisions of this law, infringement is a deliberate act conducted by
person to deceive public in order to earn unjust benefits. In this act, individual sold goods and
services under similar or resembling mark. Breach of provisions described under this law can
result in imposition of penalty in monetary terms and sentencing. In addition to this, guilty party
will also have risk for confiscation of goods and services as per the claim of original owners.
This claim is made against the guilty for the objective to attain compensation for loss under the
UAE civil code. However, described provision under this legislation is applicable only on
registered trademarks. On the basis of this aspect, unregistered mark cannot make claim for
protection from the act on infringement.
Registration of trademark is important because there is severe risk to the user of
unregistered trademark users and the owners of registered trademarks that their rights to use of
respective mark may be limited or cancelled under the provisions of UAE law. The position with
respect to previous use of trademark is not explicitly regulated under the norms of legal regime
of the country. With the implementation of 1992 of Federal law no. 37 concerning trademarks
had provided protection to the owners of registered marks. However, they were required to make
re-application for the registration with the Ministry of Economy4. In addition to this, for the
3 A. Iqbal, et al., 'The Study of the Interrelation between Law Programs and Digital Forensics in UAE
Academia.' In Proceedings of the 2013 on InfoSecCD'13: Information Security Curriculum Development
Conference,. ACM, 2013, p. 100
4 L., Nurrokhmah, M. Toufic and RM A. Mohammad, 'The evaluation of monoethanolamine-based CO 2
post-combustion capture process waste handling approaches considering the regulations in UAE' Energy
Procedia 37 2013 pp. 751-758.
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assurance that proprietors are making previous use of mark were provided the opportunity for
retention of ownership during the initial year of transition period.
In order to support international regimes and to provide better protection to the well-
known marks, United Arab Emirates had joined membership of various international treaties
such as World Trade Organization (WTO) and World Intellectual Property Organization
(WIPO). In addition to this, they are signatory to the major conventions and treaties of IP such as
Berne Convention, Paris Convention, Rome Convention, WTO’s Agreement on Trade-Related
Aspects of Intellectual Property Rights (TRIPS) and Patent Cooperation Treaty.
In addition to this, UAE had adopted various federal laws in their national regime in
order to provide better protection and enforcement to the trademarks, industrial designs,
copyright and patents. Furthermore, they had developed separate legal system Dubai
International Financial Centre (DIFC) for the drafting of IP laws. The UAE had also accepted the
membership of the Gulf Cooperation Council (GCC) along with Qatar, Kuwait, Bahrain, Saudi
Arabia and Oman).
Legal terminology
Legal definition of trademark
In accordance with the Article 2 of the legislation, anything can be considered as
trademark which have distinctive form such as words, names, drawings, figures, signatures,
letters, engravings, packs, advertisements or any other mark that is used for the purpose to
provide distinct identity to the products and services5. Protection from trademark law is provided
if individual or entity is able to satisfy the description provided in the definition of the law.
However, if any of the provision described under article 3 is satisfied then protection will not be
provided.
Well known trademark
Well known trademarks (in terms of goods and services) can be defined as mark which is
substantial among public segment. Further, use of this mark in relation to other goods and
services will create link between these two marks.
5 N. Zouag, and K. Molk, 'Intellectual Property Rights, Innovation, and Knowledge Economy in Arab
Countries'. Open Source Technology: Concepts, Methodologies, Tools, and Applications: Concepts,
Methodologies, Tools, and Applications. 2014. p. 227.
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The Federal Law No. 37 of 1992 on Trademarks
In accordance with the study of Price (2012), UAE was in position to trace their
recognition for the well-known trademarks in 1973 only two year after the formation of country
even before the enactment of the Trademark law6. This aspect can be noticed by the case of
Thani Murshid African Near East Co v Al-Nawis Refrigerator Org, Abu Dhabi Federal Court of
Appeal (Abu Dhabi Supreme Court)7. This case shows first impression by the court of law
regarding the act of agent of Dutch company whether production of tinned milk under the well-
known RAINBOW mark can prevent a local company selling the same product under similar
mark. In this case, decision was provided by the court of law, use of similar name for the
objective to earn higher profits or additional advantage is not legal act. In addition to this, party
is also deceiving consumers because they are purchasing products as they have confidence on the
quality of brand not on the name of local supplier. This decision is still famous and considered
valid in the present cases.
In 1981, the Federal Court of appeal of Abu Dhabi (Abu Dhabi Supreme Court) had
identified the provisions for the protection of well-known marks by providing favourable
judgement to the McDonald. Company had successfully enjoyed the court decision against usage
of mark by defendant through trade license to operate under the MCDONALD’S mark in the
United Arab Emirates8. In this case decision, court had commented that trademark is owned by
claimant since 1970 and products provided by them are distributed throughout the world. By
considering this aspect, use of similar mark by making some minor distribution shows the
objective to deceive public. On the basis of this justification, they had drawn conclusion that use
of similar mark to the well-known international marks is irrelevant through this statement “It is
irrelevant in this context that the mark is not registered in the United Arab Emirates; it suffices
that it is internationally well-known.”
6 D., Price, The GCC Intellectual Property Regimes: Global Harmonization or Regional Integration?.' In
The GCC Economies, Springer New York, 2012. pp. 131-146.
7 Case 3 20/72, June 24 1973, ‘Rainbow’, ICC 1981 p 883-90
8 (Abu Dhabi Fed Ct of Appeal, Case 240/80, ‘McDonalds’, March 18 1981, ICC 1982 p 658).
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