Trademarks and Registration under United Arab Emirates Law

The present study is focused on the evaluation of civil protection provided by trademark law in the UAE for well-known trademarks. For this aspect, a description will be provided regarding 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 the Paris Convention (1883) and the TRIPS Agreement (1994). For better understanding, the evaluation of law will be referenced by previous case studies and opinions 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 the Late Sheikh Zayed bin Sultan Al Nahyan. He had recognised the importance and benefits of protection provided through provisions of trademark for the prosperity of the local economy. With the changing environment and operation activities, this law has been amended by the introduction of Law No. (19) of 2000 and Law No. (8) of 2002. This legislation provides protection in UAE for the registered trademarks. The objective of this legislation is to protect the interests of businesses as well as customers in the country. In this law, a description is provided regarding the definition of trademarks and the conditions to be satisfied for their registration.

Trademark law in the UK sets a comprehensive regime in order to govern norms of providing protection to unique marks related to goods and services. In this aspect, benefits and legal protection are granted to the trademark owners along with the duty for renewal of protection after the completion of time. Rules and regulations covered in this law also provide a mechanism for the registration procedures and set 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 a person to deceive the public in order to earn unjust benefits. In this act, individuals sold goods and services under similar or resembling marks. Breach of provisions described under this law can result in the imposition of penalty in monetary terms and sentencing. In addition to this, the guilty party will also have the risk of confiscation of goods and services as per the claim of the original owners. This claim is made against the guilty with the objective of attaining compensation for the loss under the UAE civil code. However, the described provision under this legislation is applicable only to registered trademarks. On the basis of this aspect, the unregistered mark cannot make claim for protection from the act of infringement.

Registration of a trademark is important because there is a severe risk to the user of unregistered trademark users and the owners of registered trademarks that their rights to use of the respective mark may be limited or cancelled under the provisions of UAE law. The position with respect to the previous use of a trademark is not explicitly regulated under the norms of the 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 a re-application for the registration with the Ministry of Economy. In addition to this, for the assurance that proprietors are making previous use of the mark were provided the opportunity for retention of ownership during the initial year of the transition period.

In order to support international regimes and to provide better protection to the well-known marks, the United Arab Emirates joined the membership of various international treaties such as the World Trade Organization (WTO) and the World Intellectual Property Organization (WIPO). In addition to this, they are signatories to the major conventions and treaties of IP such as the 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 has adopted various federal laws in their national regime in order to provide better protection and enforcement to the trademarks, industrial designs, copyrights and patents. Furthermore, they had developed a separate legal system Dubai International Financial Centre (DIFC) for the drafting of IP laws. The UAE has also accepted membership of the Gulf Cooperation Council (GCC) along with Qatar, Kuwait, Bahrain, Saudi Arabia and Oman).

Legal terminology

The legal definition of a trademark

In accordance with Article 2 of the legislation, anything can be considered a trademark which has a 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 a distinct identity to the products and services. Protection from trademark law is provided if an individual or entity is able to satisfy the description provided in the definition of the law. However, if any of the provisions described under Article 3 is satisfied then protection will not be provided.

Well-known trademarks (in terms of goods and services) can be defined as marks which are substantial among the public segment. Further, the use of this mark for other goods and services will create a link between these two marks.

The Federal Law No. 37 of 1992 on Trademarks

In accordance with the study of Price (2012), the UAE was in a position to trace their recognition of the well-known trademarks in 1973 only two years after the formation of the country even before the enactment of the Trademark law. This aspect can be noticed in the case of Thani Murshid African Near East Co v Al-Nawis Refrigerator Org, Abu Dhabi Federal Court of Appeal (Abu Dhabi Supreme Court). This case shows the first impression by the court of law regarding the act of an agent of a Dutch company and whether the production of tinned milk under the well-known RAINBOW mark can prevent a local company from selling the same product under a similar mark. In this case, the decision was provided by the court of law, use of a similar name for the objective of earning higher profits or additional advantage is not a legal act. In addition to this, parties are also deceiving consumers because they are purchasing products as they have confidence in the quality of the brand not in the name of the 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) identified the provisions for the protection of well-known marks by providing favourable judgement to McDonald. The company had successfully enjoyed the court decision against the usage of the mark by the defendant through a trade license to operate under the MCDONALD'S mark in the United Arab Emirates. In this case decision, the court had commented that the trademark is owned by the claimant since 1970 and products provided by them are distributed throughout the world. By considering this aspect, the use of similar marks by making some minor distribution shows the objective to deceive the public. On the basis of this justification, they had drawn conclusion that the use of a 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.

Fame Provisions in Trademark Law

Trademark law developed in 1992 by UAE was in amended in 2000 (by Fed Law 19) and in 2002 (by Fed Law 8). The objective of this amendment was to recognize well-known marks explicitly under Article as it prohibits the registration of marks that merely comprise translation of famous marks for the prevention of confusion. Provisions covered in this article are supported by Amended by Federal Law No. (8) Of 2002. In this aspect following points are covered:

• Potential mark for protection not having distinctive property or character and it is merely supported by the identity of similar goods and services.
• Marks related or similar to government emblems or logos or purely religious character and which are in contradiction with the public morale
• Marks related to geographical names or other factors used for the creation of confusion regarding their origin or source
• Use of name, title or image of a third person without their consent
• Use of honorary degrees without having their legal entitlement
• Prohibited marks owned by legal entities or natural person
• Marks supported by the following words or expressions or similar to:

Concessionaire, Concession, Registered Drawing, Registered, Imitation is Considered Forgery and Copyright

• Domestic and foreign medals and currency
• Use of existing or similar to existing registered marks.

The objective of this provision was to impose restriction on the protection of marks which does not have legal implications or entitlement. With this approach, protection is provided to the existing marks registered under the law.

Article 4 of this legislation states that any trademark having goodwill in the international market beyond the boundaries of the domestic country then it will not be registered under this law until and unless it is authorized by the individual who has ownership or an official attorney. The goodwill of the trademark will be determined on the basis of public awareness. For example in the above-described case, the public of UAE was aware of the trademarks of McDonald's and Rainbow. Due to this aspect, defendants were able to take the unjust benefit of using the name of the company. Further, this provision states that a trademark with goodwill may not be registered under this legislation for distinguishing products and services if the following aspects are satisfied:

• Use of a trademark by an individual shows a link between goods and services to be distinguished from the goods and services of the original trademark owner
• Use of such a trademark led to an act of potential prejudice to the original owner of the trademark.

By considering these provisions, Houissa (2014) stated that the legislation of UAE had imposed restriction on the registration of marks which are merely comprised of translation of famous marks in the international market originating from other countries. However, an exception has been provided that registration will be considered valid if the application registration is supported by the owner or individual having official authority in this aspect. In accordance with the viewpoint of Houissa with this approach, the legislation also supports the use of international trademarks along with their protection. In order to enhance their effectiveness they had not protected all the global trademarks. By considering this aspect, they had stated that the goodwill of the market will be based on their market reputation to justify the protection and prevention of unjust use of this law.

A study by Almezaini (2012) shows that the trademark law of UAE also restricts the registration of well-known marks even if goods and services are non-identical or dissimilar to the actual good and services in situations where the use of the mark will indicate the connection with the existing mark or it can impose damages on the rights of the original holder of the trademark. According to Rahman (2013), the owner of the well-known mark is also in a position to protect their rights whether they have registered it or not under international conventions under the Agreement on Article 16 of TRIPS and on Article 6 of the Paris Convention for the Protection of Industrial Property by virtue of UAE accession to the World Trade Organization and signing of the Paris Convention in 1996.

A legal study by Rahman (2013) shows that owners of international marks had prevailed in several actions in the UAE at both levels i.e. courts and administrative in order to block the infringement from the registration. These claims were held successful by these provisions as they had demonstrated that their marks are famous through worldwide registration, market expenditures, consumer recognition, significant advertising and long-standing international use. This aspect shows that the UAE had provided a justified basis for the civil protection of the existing trademarks. In this aspect, they had also shown leniency by keeping legal terms generalized. This aspect has also been highlighted by Rahman (2013). In accordance with his viewpoint, the trademark law of UAE uses words that can be moulded as per the situation in order to provide justified court decisions.

Similar to international protection, the legislation of UAE has made adjustments for the protection of well-known marks at the national level. This fact has been highlighted in Abu Dhabi Federal Court of Appeal, Case 161/2012, ‘Ibn Battuta', December 10 2012. In this case, court had addressed the issue that reliance on expert opinion that reputation within the borders of UAE is insufficient for rendering a mark well known. This decision was supported by the following statement:

“The fame of an existing trademark will be evaluated by considering mainly two factors. The primary factors are objective and geographical area. In this aspect, a geographical area will be considered on the basis of usage of way of the mark. For example, if the usage of a mark had crossed the geographic boundaries of several countries and it is also recognised in the international market then it will be considered as renown. This aspect will also be supported by time and historical factors. The second factor is subjective in nature which states that a substantial part of the consumers is aware of the trademark.” Fed Ct of Appeal, Case 161/2012, ‘Ibn Battuta'

However, in the supplementary report, it has been stated by the experts that lack of evidence with the right holder regarding the usage of marks outside the boundaries. In this aspect, legislation states that the international reputation of a particular trademark is determined on the basis of the use of that trademark outside its national borders not only on its image. By considering this aspect, the reputation of trademarks is determined on the basis of usage regardless of fact that it is registered or not.

Issue of Trade Names vs Trademarks

According to Cottier, Shaheeza and Michelangelo (2014), there are several conflicts in the protection provided through trademark law in the UAE because of the separation of trademark systems and trade names. This issue is not only limited to the UAE, many countries in the Arab world have similar provisions. Due to these contradictory provisions, there was an issue with the similarity in the trade mark of well-known five-star hotel brands in UAE with the trade name of two-star hotels in Dubai. Similar to this, other contradictions in trade names and trademarks in the country are:

A study by Cottier, Shaheeza and Michelangelo (2014), shows that this problem arises because protection through trade names is acquired on the basis of the establishment of a physical business presence. On the other hand, in trademark protection is provided by the registration of a mark by the owner without their address or presence in the country. Due to this aspect, without having appropriate cross-checking of databases contradictions can easily occur between trade name registration and trademark registration. In addition to this, it is more difficult to challenge the name of the business on the basis of rights provided by trade mark law. In this aspect, Michelangelo (2014) stated that trademarks are monitored by reviewing periodical registrations by the gazette which is published in the “opposition period” in order to allow any individual for the legal interest to oppose the published trademark application prior to its registration. It is generally an administrative procedure accomplished by trademark offices. In this aspect, they have the authority to take cancellation action for cancelling the trademark registration on the basis of facts that it is confusing with the previous mark or name.

Trade names in UAE can be challenged by the procedure of trade name deletion case through the court. However, risk in these cases arises for justified decision because the court assesses the ownership rights on the basis of the date of registration in the country where the dispute had occurred. In this aspect, Mitchell and Mariela (2014) demonstrated the case that if a trade name owner in Qatar existed prior to the registration of the mark in that country then such a situation would be in favour of the trade name despite the fact that the trademark is well-known to the public and it has a substantial impact. This factor is not justified in various case situations. However, trade name cancellation requires a complete lawsuit which is time and cost-consuming. A study by Mitchell and Mariela (2014), shows that there are various cases that shows successful examples of name changes by administrative route in the UAE.

Recently, the government of Abu Dhabi issued a new regulation for trade names with the title “Administrative Decision No 7 for the year 2014 Regulating trade names in the Emirates of Abu Dhabi”. It is a federal union developed for the governance of both local and federal legislation. Court decision under this law addresses the existing conflicts between trade names and trademarks in the country as it is a weak loop of the legal regime because these two databases are never cross-checked in a proper way. For a long period of time, original owners of trademarks were facing the issue of the similarity of their marks with the trade names. In addition to this, if trade names are not published then they do not have the opportunity for infringement prior to the registration. This issue has been resolved by this new legislation according to which registration of trade names are prohibited which are similar to the existing national and international registered trademarks.

On this law, Mitchell and Mariela (2014) stated that this decision of the court will provide protection to both registered and well-known marks for the prevention of registration of similar marks until and unless authorization is provided by the original owner. Legal scholar O'Connor (2015) stated that the regulatory authorities of the UAE are continuously making modifications to their legal regimes in order to resolve previous issues and loopholes in legal systems. Furthermore, this legislation set an ideal example for other countries to adopt this approach towards conflicts of trademarks and trade names in order to strengthen their protection system for intellectual property.

Paris Convention (1883)

Paris Convention 1883 was developed with the objective of protecting entire industries in the countries in which this convention will be applied. UAE was covered in the list of parties involved in the Paris Convention for the adoption of one of the widest treaties in the world. Substantive provisions under this convention are mainly segregated into three categories i.e. national treatment, priority rights and common rules. In accordance with the Paris Notification No. 173, UAE accepted the membership of the union on September 19, 1996, when this convention was revised with respect to their legislation.

In accordance with Articles 2 and 3 of this treaty, natural and juristic individuals are entitled to avail benefit of trademark protection in foreign countries also which are cited as members of the convention. In addition to this, if rights of intellectual property are granted to the individuals then they are entitled to protection and legal remedy similar to their national convention.

Further, article 4 of this treaty deals with the priority rights of the convention. In accordance with these provisions, applicants are entitled to make use of their first filing date as the effective date while contracting with the other states provided that the applicant or their successor had made a subsequent application within 6 months.

In the legal regime of UAE, the International Classification of Goods and Services is followed in order to register the trade mark under norms Nice Agreement (10th edition). On the basis of these provisions, modifications were made under provisions of trademarks legislation with the Federal Law No. 8 for the year 2002. This amendment had modified some of the articles of the Federal Law No. 37 for the year 1992. This law is applicable to seven Emirates which are Dubai, Abu-Dhabi, Ajman, Ras Al-Khaimah, Sharjah, Fujairah and Umm Al-Quwain. Furthermore, all Emirates are required to make a separate application for each class of goods or services. In addition to this, a certified translation of the trademark is required to be submitted by the regulatory authority is also mandatory.

With this approach, complete information will be submitted to the regulatory authority prior to its registration process and the application's filing. Further, this information will be examined by the authorized individuals for the purpose of registration. After the satisfaction of entire formalities, the trademark application is accepted by the registrar and simultaneously they publish it in the trade journals along with the two local daily Arabic newspapers . Cutting of this news blog is submitted to the trademark office. The objective of this provision is to provide fair opportunity to individuals who are interested in filing a notice of opposition regarding the process of registration. However, this application will be considered only if it is within 30 days from the day of any publication. The decision of the registrar regarding this opposition appeal will be provided to the committee and further they will deliver it to the competent court. In case, there is no opposition the trademark is registered and relevant documents are submitted to the owner.

In this aspect, Jandhyala (2015) stated that the provision described by the Paris Convention (1883) provides a fair opportunity to individuals if their existing mark is similar to the proposed mark for protection under trademark law. By integrating this regime into national legislation, the government of UAE is able to ensure the prevention of registration of marks which similar to or resemble the existing marks.

On this subject matter Decree No. 12 for 2002 can be considered which is issued by mutual consent of the Ministry of Trade and Commerce on February 3, 2002. In this decree, they had stated that registration fees must be provided within 30 days from the date on which the opposition appeal was made or the date on which a decision was received by the Trademark Office related to the appeal of the opposition. On the basis of this date, an invoice covering registration charges will be issued at the stage of filling. The objective of this norm is to attain the payment of the official fees by the Trademark Office.

Registration of a trademark is said to be valid for ten years from the date of filing of the application. After the expiry of this period, individuals are required to make an application for renewal of this protection. Fees for renewal applications can be paid during the last year of the period of protection. However, in this period, a grace of 3 months is allowable to the individual for the late renewal. However, in situations of delay, individuals are required to pay penalty charges. This renewal of the trademark is also published in a similar way at the time of registration.

Ownership of registered trademarks is not essential to be assigned with the goodwill of commercial enterprise in each situation. It is because; goodwill will only be recorded in the register if it does not have any effect on the third parties. In addition to this, changes in the name and address of the owner are recorded for the protection of rights. In this aspect, user agreements that are registered, limitations of the list of goods and services and other amendments will also be considered which do not have a general identity of the mark substantially.

Further, the provision of the Paris Convention (1883), states that it is mandatory to make the use of the trademark for filing applications for trademark registration or maintenance for enforceability. However, interested parties are entitled to make request for cancellation of trademark registration in a situation where the owner is not in a position to make use of that mark in UAE for five consecutive years from the date of registration.

Offences punishable under this law are as follows: • Unauthorized or illegal usage of a registered trademark by third person • Selection of counterfeit trade or service mark which is not reliable or can be considered as fake • Application for registration of mark which belongs to the another party in a bad faith • Dealing in goods and services which contains counterfeit trade or service mark which is not reliable or can be considered as fake • Usage of mark that is covered under certain categories of unregistered mark According to the legal scholar Sangar (2012), provisions under Paris Covenant covers standard framework to prevent act of infringement. With the integration of these provisions, UAE had made modification in their existing legal regimes in order to provide better protection to the well-known trademarks. In addition to this, common rules have been developed in order to ensure the applicability of similar laws in all foreign countries. A study of Sangar shows that, prior to this legal regime protection to the international brands or protection of trademarks at the global level was not an easy task. It is because; there were significant differences between the rules and regulations of the different countries. The establishment of international conventions promoted uniform legal regimes that can be accepted by all countries in order to develop effective regimes for the purpose of protection.

Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement (1994)

World Trade Organization (WTO) established an agreement for the standards of many forms of intellectual property with the name of Trade-Related Aspects of Intellectual Property Rights (TRIPS). This legal regulation is applicable to the nations which are registered as members of the WTO. This agreement introduced legislation for the protection of intellectual property in an international trading system. The legal regime under TRIPS is not solely focused on the trademark law it covers entire intellectual property such as copyright and related rights, patents, geographical indications, integrated circuit layout designs, industrial designs and protection of undisclosed information.

In accordance with the provisions of TRIPS, all members are required to comply with the norms described in national obligations. These obligations consist of a description of the standard treatment of domestic and foreign individuals and companies. Furthermore, Article 4 of this regime states that discrimination between foreign individuals and companies will not be considered ethical or legal. However, special transition rules will be applied only in situations where the developed country is not in a position to provide patent protection in a given area of technology.

It is not essential for members to have common law in their country. However, members are required to comply with certain minimum standards for the purpose of protecting intellectual property rights covered in it. In this aspect, members are in a position to make a selection of laws which provide more extensive protection for the purpose of implementation. For this aspect, member countries are required to make sure that applied legislation is not in contradiction with the minimum standards agreement.

According to the viewpoint of Peter (2015), TRIPS provides freedom to the members for the determination of methods of implementing the provisions of the agreement in their legal system. Due to this aspect, the agreement of TRIP had considered a diversified legal framework for the convenience of their members. UAE had applied the minimum standards in the legal regime of the trademark law in a proper manner to provide protection to the international well-known marks. A study by Yilma and Halefom (2015) shows that several provisions of TRIPS regarding the protection of trademarks were copied from the Paris Convention for the Protection of Industrial Property.

Article 16 (1) of this agreement states that the owner of the registered trademark must have the exclusive right to prevent third parties from making use of similar or resembling marks in situations where their act is not supported by the owner's consent. However, above above-described rights will not prejudice any existing prior rights or affect the possibility of WTO members from making rights available on the basis of use. In accordance with the study of Houissa (2014), this aspect has been stated because consideration of previous use of a trademark is relevant in various situations. However, in all situations, the fundamental question is the ownership of the trademark.

This rule also rectified the provisions of initial registration for the protection. It is because; article 21 of this agreement cancels the protection of a trademark which was not registered in an appropriate manner. However, there are no specified criteria that in what circumstances a trademark will be considered as wrongly registered but it is considered with the provisions of Article 17. This article states that once a trademark had been used for a period of five years from the date of registration then its validity cannot be disputed. In various case laws, the court had applied the provisions of prior use in order to make a justified decision. An example of this applicability can be noticed in case no.260/2003 by the Cassation Court of Dubai in their judgment of 2003. In this case, the court had confirmed that ownership rights can be established through usage instead of mere consideration of registration.

Conclusion

The present study highlights a description of civil protection provided by UAE to well-known brands through their trademarks law developed under provisions of the Federal Law No. 37 of 1992 on Trademarks (as amended by Law No. 19 of 2000 and Law No. 8 of 2002). On the basis of the described case studies, it can be stated that internationally famous marks which are not used in UAE are in a position to prevent registration of similar or resembling marks by third parties under trademark law. However, local well-known marks are not in the position to invoke this law in case precedent. This aspect shows that the legislation of UAE is clear in its international protection of well-known marks and it has been interpreted by at least one court in order to favour the marks at international marks over the local marks.

REFERENCES

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Online

• FEDERAL LAW NO. (37) OF 1992. [pdf]. <http://www.wipo.int/edocs/lexdocs/laws/en/ae/ae002en.pdf>. (accessed 26th February 2016)
• Osserian, N., A question of territoriality, [Website], 2008, <http://www.worldtrademarkreview.com/Magazine/Issue/49/Country-correspondents/United-States-Cedar-White-Bradley>. (accessed 26th February 2016)
• Paris Notification No. 173 Paris Convention for the Protection of Industrial Property. 1996. [pdf]. <http://www.wipo.int/edocs/lexdocs/laws/en/ae/ae002en.pdf>. (accessed 26th February 2016)
• Sangar, A., Protecting Your Trademark in the UAE, [Website], 2012, <http://diazreus.com/protecting-your-trademark-in-the-uae/>. (accessed 26th February 2016) UAE. [Website], 2010, <http://www.agip.com/Agip_Country_Service.aspx?country_key=10&service_key=T&lang=en>. (accessed 26th February 2016)

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