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June – July 2016
The United Arab Emirates Federal Supreme Court recently upheld important principles in relation to well-known trademark protection and elements; bad faith as a reason to lose ownership of a prior-filed application; and the need to consider ownership in the country of origin.
Recent case law has set a precedent in the United Arab Emirates. The Federal Supreme Court has upheld important principles in relation to:
A trademark owner in the restaurant and cafe services sector, specializing in selling cupcakes and sweets, noted that a potential franchisee had moved to file and register the owner’s trademark, which had originated in Jordan. The owner therefore moved and opposed the mark on the following grounds:
The Trademark Office rejected the registration application on grounds of bad faith based on opposition filed by the prior owner. This principle does not explicitly exist in UAE trademark law as bad faith, but is rather implied from the law as a form of ‘unjustified registration’. The opposition registrar held that the trademark was applied for while the applicant was still contracted with the legitimate owner for use of the mark in the United Arab Emirates and therefore the application was made in bad faith.
The registrar’s decision was challenged before the Grievance Committee, which reversed the decision and accepted the application. However, the trademark owner appealed before the Abu Dhabi Federal Court of First Instance according to UAE trademark law.
The Court of First Instance appointed a specialist trademark expert who met with the parties and made the following conclusions in his report:
The Court of First Instance affirmed the findings of the report, overturned the Grievance Committee decision and rejected the trademark registration.
The case went to the Court of Appeal, which argued, among other things, that the Court of First Instance had failed to consider the appellant’s documents which proved its use of the mark in the United Arab Emirates. The Court of Appeal took up the matter and while it did uphold the primary decision, it also addressed the issue of bad faith in trademark infringement and identified a list of criteria to determine bad faith. This is an important issue which is seldom broached in this type of case. Foremost among these criteria are the following
The Court of Appeal dismissed the appeal. However, the case was brought to the Court of Cassation on the same grounds, but with an emphasis on the Court of Appeal’s failure to consider evidence of the appellant’s use of the mark in the United Arab Emirates which proved its prior rights in the mark.
The Court of Cassation reversed the Court of Appeal’s decision and, while dismissing most grounds for appeal, reversed the judgment on grounds of evidence of use.
The Court of Appeal, on remand from the Court of Cassation, affirmed its earlier finding. It balanced the prior use evidence and confirmed that the owner of the trademark in Jordan provided evidence of prior use via advertisements which was sufficient to prove prior use. The Court of Cassation then received a further appeal but it was dismissed.
This case highlights the following points:
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