The final Law Update of 2022 is here, and it’s packed full of articles. The double edition features two focus areas, first is a spotlight on Energy and Resources and second we feature a collection of articles on Transport and Logistics. The developments occurring in these sectors in the MENA region are unprecedented and our lawyers cover vast themes for you.
The Energy and Resources focus features topics such as diversifying energy resources, solar PV, mining in the Middle East, renewable energy and green hydrogen. From a transport perspective, we draw attention to the Bahrain metro project, discuss the challenges and remedies associated with the repossession of an aircraft, and there is advice on what to consider should a party vary the terms of a shipping contract.
This edition navigates you through updates from across jurisdictions such as, Oman, Jordan, Saudi Arabia, Egypt, Iraq, Qatar, and the UAE. Each article is timely and provides insights into legal issues and cases that are affecting these sectors across the region.Read the full edition
Background to the Case
The Claimant/our client, a Swiss watchmaker, is the owner of a trademark which had been registered in the office of origin, Switzerland, with the World Intellectual Property Organisation (WIPO) and also registered internationally. The Claimant lodged an application to register their trademark in Qatar, which consisted of a semi-figurative trademark featuring the company name and a symbol, with the Ministry of Business and Trade’s Industrial Property Rights Office. The application was accepted and as part of the examination period was published for opposition purposes in the monthly Official Gazette.
An objection to the registered trademark was filed with the Trademark’s Registrar by the Defendant on the grounds that the Claimant’s trademark shared an identical symbol to theirs. The Registrar issued a decision upholding the objection made by the Defendant and the registration process was halted.
Ruling of the Court of First Instance (civil division)
The Claimant contested the decision of the Registrar before the Court of First Instance based on the provisions of Article 6(5) of the Paris Convention (of which Qatar is a signatory state) and Article 8 of Qatar’s Trademark Law No 9 2002.
The Claimant stated their trademark differed from that of the Defendant’s based on the following reasons:
The Court of First Instance rejected the claim on the following grounds:
In reaching its decision to uphold that of the Registrar, the Court also took into account the fact that the Defendant had registered their trademark in Qatar before the Claimant did.
Judgment of the Court of Appeal (civil division)
The Claimant/our client appealed against the Judgement before the Court of Appeal based on the aforementioned reasons and argued that the Court of Cassation had previously issued a principle which had stated that in assessing the degree of similarity between two trademarks, the trademark should be examined in its entirety and not solely on a particular feature or aspect.
The Court of Appeal overruled the findings of the Court of First Instance and ruled in favour of the Claimant. In deciding the case, the Court of Appeal applied the balancing test, where it viewed the overall aspects of the trademark and concluded that the trademarks were dissimilar and can be distinguished by the consumer. They also viewed that the symbol in question was generic and the Defendant could not be afforded exclusivity of its use. The Court of Appeal ruled that the Claimant be allowed to proceed with the registration of their trademark in Qatar.
Judgment of the civil Court of Cassation
The Defendant did not appeal. However, The Ministry of Business and Trade only appealed against the Judgement before the Court of Cassation based on the following arguments:
The Court of Cassation rejected the Ministry’s appeal on the following grounds:
In the light of the foregoing, the Court of Cassation upheld the judgment of the Court of Appeal and rejected the Ministry’s appeal.
Based on the above, it is crucial for any party wanting to dispute a decision made by the Ministry of Business & Trade to prove his rights on a Trademark, to be aware that the Civil Division is the competent division regarding the Trademark dispute, not the Administrative Division of the Civil Court regarding any controversial decision issued by the Ministry of Business and Trade’s Industrial Property Rights Office. Therefore, this Judgment openly reserved the jurisdiction solely to the Civil Division Court.