Business Law Case Study: UAE Trademark Law, Infringement & Remedies

This case study examines UAE trademark law, focusing on infringement and protection mechanisms. It discusses defenses against infringement, including Trade-related Aspects of Intellectual Property Rights under Article 16(1) of the UAE trademark law, illustrated by the Red Bull case against Bullfighter. The study also explores trade dress protection, referencing the Uncle Ben's rice packaging and Pfizer's Viagra pill. A memo proposal outlines steps for businesses to protect their trademarks through registration and infringement management. The conceptual discussion highlights important concepts related to trademark remedies, liabilities, and rights, emphasizing civil infringement, unfair competition, and available remedies in state law, providing a comprehensive overview of trademark law in the UAE.

Business Law Assignment
UAE Trademark Law and Relevant Concepts

Synopsis 1.
The defense regarding infringement in trademark law selected for this synopsis is
“Trade-related Aspects of Intellectual Property Rights”, which is provided and explained in
Article 16(1) of the UAE trademark law. Trademark infringement can be defined as the
unauthorized utilization of service-mark or trademark on related or competing services and
goods.
Under the defense of Article 16(1), owning a registered trademark presents an
exclusive right for the owners. This defense prevents every third party from utilizing a
similar trade course without the owner’s consent. There can be similarities in terms of the
services or goods registered under the trademark which leads towards the chances of
confusion (Dutta & Coury, 2002). However, it is further specified under Article 16(1) that
these rights will not prejudice any previous current rights and also not influence the chance
for availability of WTO member’s rights as per specific utilization.
In order to explain this defense to trademark infringement, the recent case of Red
Bull will be discussed who won the cause against an importer of UAE to sell Bullfighter, a
competitive product. The importer was imposed a fine worth 4,088 Dollars (15,000
Dirhams) for trademark infringement (Massadeh & Al-Nusair, 2017). Red Bull operates
through its trademark registered under UAE law reserving exclusive rights to protect its
distinctive design, symbol, name and logo.
Red Bull presented the argument that the customers were being mislead by the
competitors due to its similar packaging and name as endorsed by Red Bull (Price &
AlDebasi, 2017). The court reviewed that Bullfighter adopted this product intentionally
appropriating Red Bull’s reputation and capitalizing itself on the company’s market share,
effective marketing, and reputation.

Synopsis 2.
The second defense selected for this discussion is the protection of trade mark under
UAE trademark law. Trade dress can be defined as a legal construct which considers the
physical appearance of a specific product like texture, structure, design, and color. This law
is necessary for arming appropriate legal tools to product design owner (Umarvasylyeva &
Narciso, 2016). The product design owners can deter any third party who tries to knock it
off with the same or similar design.
The trademark office of UAE considered to include registration of trademark under a
single color within the legal system of 2007. This was incorporated after a case was file
regarding a range of rice production by Uncle Ben. The color utilized for this packaging was
a specific orange shade, as a distinct feature used by customers to recognize the product.
Under Article 2 of the UAE trademark law, the trademark for the orange color packaging of
Uncle Ben’s rice was secured (Fouda, 2016). There was acceptance and registration of the
color trade by the UAE trademark officer under class 30 of the categories. These categories
are provided by WIPO (World Intellectual Property Organization) illustrating that the
trademark office of UAE protect less- known trademarks as well.
In another case, Pfizer considered broadly advertising its Viagra pill through its
appearance a blue pill. Due to its promotion, UAE customers started referring to Viagra as
“the little blue pill” (Kaul, 2018). Therefore, Pfizer registered its product under the
classification of diamond shaped, blue color pills. As a result, Pfizer was able to protect its
trade dress of the pill.
Memo Proposal
MEMO

Protecting Business Trademark in UAE
The UAE government has placed commendable steps in robust laws of trade. The present
approach for protecting trademark and the mechanisms for carrying out protections are
quite similar to US jurisdictions. The UAE trademark law presents several provisions to
outline valuable steps for protecting businesses from trademark law suits through
registration and penalties.
In order to guard its trademark from any lawsuit, the new entrepreneur should follow the
following steps:
Registration of business trademark: The company has to register its trademark for
acquiring appropriate rights and protecting them. The trademark should be set such that it
does not unfairly leverage the equity of existing competitors (Umarvasylyeva & Narciso,
2016). Registration will also help in establishing a sustainable corporate name with the
capability to build a more personalized goodwill in the industry.
Manage potential problems of trademark infringement: The UAE law provides a clear
objective to protect the rights of business trademark in UAE. The company has to ensure
attaining a good title for the trademark in order to avoid any risks regarding trademark
infringement.
By following these simple steps, a trademark holder has the ability of commencing legal
proceedings for its infringed utilization of trademark (Massadeh & Al-Nusair, 2017).
However, there can be an issue of enforcement based on the strengths of the trademark
right available. The fundamental solution to enforce trademark rights in UAE is
registration. This enhances the scope of success in legal proceedings related to criminal
remedies in the form of punishment.

Conceptual Discussion
There were a number of concepts that I found important in the trademark
assignments and readings in regards to remedies of trademark. These concepts helped me in
covering every aspect of trademark remedies, liabilities and rights in the emerging
foundation of trademark abuse and use in UAE. The overall session provided valuable
guidance required as a trademark owner for effectively defending and protecting their
brands while maintaining the trademark value.
The remedies included the ones available for civil infringement as explained by
expert practitioners and applied in state and federal courts. Various necessary elements were
discussed to establish the relationship between unfair competition and trademark liability
(Price & AlDebasi, 2017). These elements are: availability of relief in counterfeiting cases,
remedies and relief in state law for unfair competition and infringement, special remedies of
enforcement available, wrongful seizure of goods under extraordinary relief, issue of
permanent and preliminary injunctions, and principles for impact of bad faith and equitable
relief.
Further ahead, these concepts were explained and incorporated through real-life case
examples which enhanced their overall understanding. This is just a brief of relevant
concepts as there are a number of concepts important and related to utilization and
application in dealing with the aspects of trademark law. In addition, various procedures and
protocols are provided as significant under the registration of a
trademark and while dealing with lawsuits related to trademark infringement or other
relevant, legally valid issue.

References
Dutta, S., & Coury, M. E. (2002). ICT challenges for the Arab world. The Global
Information Technology Report, 2003, 116-131.
Fouda, A. G. (2016). Who's Foolong Whom-Combating Counterfeits: The UAE Context. Ct.
Uncourt, 3, 25.
Kaul, M. (2018). Catch Me If You Can: Anti-Fraud Law in UAE. Ct. Uncourt, 5, 6.
Massadeh, F., & Al-Nusair, F. (2017). Consumer Protection in The UAE: The Trademarks
Act in Light of TRIPS Provisions. Journal of Intellectual Property Rights, 22, pp.
146-153.
Umarvasylyeva, K., & Narciso, M. (2016). Letters of Intent in the UAE. Ct. Uncourt 28-, 3,
29.
Price, D., & AlDebasi, A. (2017). TRIPS anew–and possible future directions. In Protecting
Intellectual Property in the Arabian Peninsula (pp. 336-355). Routledge.