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Suzanne Abdallah - Senior Associate - Litigation
July – August 2014
Case Facts & Background
The Claimant, a sole establishment, filed an action before the Dubai Court of First Instance against another sole establishment, the Defendant, requesting the court to establish its ownership of a trademark and further to prevent the Defendant from using the trademark in the UAE pursuant to the Claimant’s ownership rights to the trademark after being registered in Bahrain and Jordan. The Claimant had applied to register the trademark in the UAE but was surprised to learn that the Defendant had already registered the mark in its own name despite the Claimant’s prior use of the trademark in the UAE.
The Defendant, in an attempt to prevent the Claimant from infringing the trademark and using it in the UAE, filed a counterclaim alleging ownership rights to the trademark based on its prior use of the mark in the UAE .
Court of First Instance
The Court of First Instance dismissed the claim and accepted the counterclaim filed by the Defendant.
Court of Appeal
The Claimant appealed the judgment to the Court of Appeal who overturned the lower court’s judgment. The Court of Appeal confirmed the Claimant’s entitlement to own the trademark in the UAE and highlighted the Defendant’s lack of entitlement to use the trademark in the UAE. Further, the Court of Appeal ordered that the Defendant’s trademark be deregistered and directed the Defendant to stop contesting the Claimant’s use of the trademark.
The Court of Appeal based its decision on several points, notably:
The Defendant appealed the Court of Appeal’s judgment to the Court of Cassation.
Court of Cassation
Before the Court of Cassation the Defendant contended that the Court of Appeal erred in its decision and misapplied the law. The Defendant based its appeal on the following grounds:
The Court of Cassation dismissed the appeal and upheld the ruling of the Court of Appeal. In its decision, the Court of Cassation confirmed the following principles:
An electronic address serves the same function as a trademark in terms of advertising and promoting the enterprise and its associated services and helping the consumer to identify the services from the web site. On that basis, the mere creation and registration of an electronic address constitutes use of the distinguishing marks of the enterprise and the trademark for the associated services in the context of the Internet.
The Court of Cassation held that the expert report confirmed that on 14 December 2000 the Claimant had set up a website on the Internet and confirmed that on 16 July01 the Claimant used the web site to advertise its hair and nail care services before the Defendant’s first invoice was issued for the brochure on 15 October 2001 which contained the trademark as part of its trade name.
The Court of Cassation therefore upheld the Court of Appeal judgment and confirmed that the Claimant had prior use of the trademark and was entitled to own the trademark in question. The Court of Cassation confirmed that although the Claimant had only set up its Dubai branch in 2004, the Claimant had started advertising its trademark from 16 July 2001 through its website, enabling consumers to avail the service online and, that this is sufficient for it to have used the Trademark.