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2006 Downloads 24 Pages 5901 Words
Trademark is a recognizable sign or mark which provides distinct identity to the goods and services in the market. In present era, vital importance has been provided to the trademarks because it creates immense addition to the value of business and commercial transactions. It is because; these marks have substantial impact on public and influence their purchase decisions due to factor such as brand loyalty . By considering this aspect, legislation had developed specific provisions to provide protection to the intellectual property from the act of infringement. United Arab Emirates is considered to be world's premier trading hub. Thus, government authorities had developed effective regime for the protection of business as well as customers . Further, they had developed standards for brand owners’ rights for effective protection at both domestic and international level.
Present study is focused on evaluation of civil protection provided by trademark law in UAE to the well-known trademarks. For this aspect, description will be provided regarding the 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 Paris convention (1883) and TRIPS Agreement (1994). For better understand, evaluation of law will be referenced by previous case studies and opinion of legal experts and scholars on it.
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 Late Sheikh Zayed bin Sultan Al Nahyan. He had recognised the importance and benefits of protection provided through provisions of trademark for prosperity of local economy. With the changing environment and operation activities, this law has amended by introduction of Law No. (19) of 2000 and Law No. (8) of 2002. This legislation provides protection in UAE for the registered trademarks. Objective of this legislation is to protect the interest of businesses as well as customers in the country. In this law description is provided regarding definition of trademarks and conditions to be satisfied for its registration.
Trademark law in UK sets a comprehensive regime in order to govern norms of providing protection to unique marks related to goods and services. In this aspect, benefit and legal protection is granted to the trademark owners along with the duty for renewal of protection after completion of time . Rules and regulations covered in this law also provides mechanism for the registration procedures and sets 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 person to deceive public in order to earn unjust benefits. In this act, individual sold goods and services under similar or resembling mark. Breach of provisions described under this law can result in imposition of penalty in monetary terms and sentencing. In addition to this, guilty party will also have risk for confiscation of goods and services as per the claim of original owners. This claim is made against the guilty for the objective to attain compensation for loss under the UAE civil code. However, described provision under this legislation is applicable only on registered trademarks. On the basis of this aspect, unregistered mark cannot make claim for protection from the act on infringement.
Registration of trademark is important because there is severe risk to the user of unregistered trademark users and the owners of registered trademarks that their rights to use of respective mark may be limited or cancelled under the provisions of UAE law. The position with respect to previous use of trademark is not explicitly regulated under the norms of 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 re-application for the registration with the Ministry of Economy . In addition to this, for the assurance that proprietors are making previous use of mark were provided the opportunity for retention of ownership during the initial year of transition period.
In order to support international regimes and to provide better protection to the well-known marks, United Arab Emirates had joined membership of various international treaties such as World Trade Organization (WTO) and World Intellectual Property Organization (WIPO). In addition to this, they are signatory to the major conventions and treaties of IP such as 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 had adopted various federal laws in their national regime in order to provide better protection and enforcement to the trademarks, industrial designs, copyright and patents. Furthermore, they had developed separate legal system Dubai International Financial Centre (DIFC) for the drafting of IP laws. The UAE had also accepted the membership of the Gulf Cooperation Council (GCC) along with Qatar, Kuwait, Bahrain, Saudi Arabia and Oman).
In accordance with the Article 2 of the legislation, anything can be considered as trademark which have 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 distinct identity to the products and services . Protection from trademark law is provided if individual or entity is able to satisfy the description provided in the definition of the law. However, if any of the provision 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 mark which is substantial among public segment. Further, use of this mark in relation to other goods and services will create link between these two marks.
In accordance with the study of Price (2012), UAE was in position to trace their recognition for the well-known trademarks in 1973 only two year after the formation of country even before the enactment of the Trademark law . This aspect can be noticed by 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 first impression by the court of law regarding the act of agent of Dutch company whether production of tinned milk under the well-known RAINBOW mark can prevent a local company selling the same product under similar mark. In this case, decision was provided by the court of law, use of similar name for the objective to earn higher profits or additional advantage is not legal act. In addition to this, party is also deceiving consumers because they are purchasing products as they have confidence on the quality of brand not on the name of 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) had identified the provisions for the protection of well-known marks by providing favourable judgement to the McDonald. Company had successfully enjoyed the court decision against usage of mark by defendant through trade license to operate under the MCDONALD’S mark in the United Arab Emirates . In this case decision, court had commented that trademark is owned by claimant since 1970 and products provided by them are distributed throughout the world. By considering this aspect, use of similar mark by making some minor distribution shows the objective to deceive public. On the basis of this justification, they had drawn conclusion that use of 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.
Trademark law developed in 1992 by UAE was in amended in 2000 (by Fed Law 19) and in 2002 (by Fed Law 8). Objective of this amendment was to recognize well-known marks explicitly under Article as it prohibits the registration of marks that merely comprises 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:
Concessionaire, Concession, Registered Drawing, Registered, Imitation is Considered Forgery and Copyright
Objective of this provision was to impose restriction on protection of marks which does not have legal implication or entitlement. With this approach protection is provided to the existing marks registered under law.
Article 4 of this legislation states that any trademark having goodwill in 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 has ownership or official attorney. Goodwill of the trademark will be determined on the basis of public awareness . For example in the above describe case, public of UAE was aware with the trademark of McDonald and Rainbow. Due to this aspect, defendants were able to take unjust benefit of using the name of the company. Further, this provision states that trademark with goodwill may not be registered under this legislation for distinguish of products and services if following aspects are satisfied:
By considering these provisions, Houissa (2014) had stated that legislation of UAE had imposed restriction on the registration of marks which are merely comprised translation of famous mark in international market originated from the other countries. However, exception has been provided that registration will be considered valid if application is registration is supported by owner or individual having official authority in this aspect . In accordance with the viewpoint of Houissa with this approach, legislation also supports use of international trademarks along with their protection. In order to enhance their effectiveness they had not provided protection to all the global trademarks. By considering this aspect, they had stated that goodwill of market will be based on their market reputation to justify the protection and prevention of unjust use of this law.
Study of Almezaini (2012) shows that trademark law of UAE had also imposed restriction on the registration of well-known marks even if good and services are non-identical or dissimilar to the actual good and services in situation where use of mark will indicate the connection with the existing mark or it can impose damages on the rights of original holder of trademark . According to Rahman (2013), owner of the well-known mark is also in 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.
Legal study of Rahman (2013) shows that owners of international marks had prevailed in several actions in the UAE at both the level 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, UAE had provided justified basis for the civil protection to 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, trademark law of UAE had used words that can be moulded as per the situation in order to provide justified court decisions.
Similar to the international protection, legislation of UAE had made adjustments for the protection of well-known marks at 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 following statement:
“The fame of an existing trademark will be evaluated by considering mainly two factors. Primary factor is objective and geographical area. In this aspect, geographical area will be considered on the basis of usage of way of mark. For example, if usage of mark had crossed geographic boundaries of several countries and it is also recognised in international market then it will be considered as renown. This aspect will also be supported by time and historical factors. Second factor is subjective in nature which states that substantial part of the consumers is aware from 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 usage of mark outside the boundaries. In this aspect legislation had stated that international reputation of a particular trademark is determined on the basis of use of that trademark outside its national borders not only on its image. By considering this aspect, reputation of trademarks is determined on the basis of usage regardless of fact that it is registered or not.
According to Cottier, Shaheeza and Michelangelo (2014), there are several conflicts in protection provided through trademark law in 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 had similar provisions . Due to these contradictory provisions there was issue in similarity in 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 contradiction in trade name and trade mark in the country are:
Study of Cottier, Shaheeza and Michelangelo (2014), shows that this problem arises because, protection through trade names is acquired on the basis of establishment of physical business presence. On the other hand, in trademark protection is provided by the registration of mark by owner without their address or presence in the country. Due to this aspect, without having appropriate cross check of data bases contradiction 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) had 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 trademarks offices. In this aspect, they have 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 procedure of trade name deletion case through the court. However, risk in these cases arises for justified decision because court assesses the ownership rights on the basis of date of registration in the country where dispute had occurred. In this aspect, Mitchell and Mariela (2014) had demonstrated the case that if trade name owner in Qatar existed prior the registration of trade mark in that country then such situation will be in favour of trade name despite of the fact that trademark is well-known to the public and it has a substantial impact. This factor is not justified various case situations . However, trade name cancellation requires a complete law suit which is time and cost consuming. Study of Mitchell and Mariela (2014), shows that there are various cases that shows successful example for the name changes by administrative route in UAE.
Recently, government of Abu Dhabi had issued new regulation for the 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 name 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 issue of similarity of their marks with the trade names. In addition to this, if trade names are not published then they do not have 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) had stated that this decision of 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), had stated that regulatory authorities of UAE is continuously making modifications in their legal regimes in order to resolve previous issues and loop holes in legal systems. Furthermore, this legislation had set ideal example for other countries to adopt this approach towards conflicts of trademarks and trade names in order to strengthen their protection system for the intellectual property.
Paris convention 1883 was developed for the objective of protection of entire industry in the countries in which this convention will be applied. UAE was covered in the list of parties involved in Paris convention for the adoption of the 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 had accepted the membership of union on September 19, 1996 when this convention was revised with respect to their legislation.
In accordance with the Article 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 a member of the convention. In addition to this, if right 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 effective date while contracting with the other states provided that applicant or their successor had made subsequent application within 6 months.
In legal regime of UAE, 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 on seven Emirates that are Dubai, Abu-Dhabi, Ajman, Ras Al-Khaimah, Sharjah, Fujairah and Umm Al-Quwain. Furthermore, all Emirates are required to make separate application for the each class of goods or services. In addition to this, certified translation of trademark is required to be submitted by regulatory authority is also mandatory.
With this approach, complete information will be submitted with the regulatory authority prior to its registration process during the filing of application. Further, this information will be examined by the authorized individuals for the purpose of registration. After the satisfaction of entire formalities, 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. Objective of this provision is to provide fair opportunity to the individuals who are interested in filing the notice of opposition regarding process of registration. However, this application will be considered only if it is within 30 days from the day of any publication. Decision of registrar regarding this opposition appeal will be provided to the committee and further they will deliver it to the competent court. In case, if there is no opposition they trademark is registered and relevant documents are submitted to the owner.
In this aspect, Jandhyala (2015) had stated that provision described by Paris convention (1883) provide fair opportunity to the individuals if their existing mark is similar to the proposed mark for the protection under trademark law . By the integration of this regime in national legislation, government of UAE is able to ensure prevention of registration of marks which similar or resembling to the existing marks.
On this subject matter Decree No. 12 for 2002 can be considered which is issued by mutual consent of 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 opposition appeal was made or the date on which decision is received by Trademark Office related to the appeal of opposition . On the basis of this date, invoice covering registration charges will be issued at the stage of filling. Objective of this norm is to attain the payment of the official fees by the Trademark Office.
Registration of trademark is said to be valid for ten years from the date of filing of application. After the expiry of this period, individuals are required to make application of renewal of this protection. Fees for renewal application can be paid during the last year of period of protection. However, in this period, grace of 3 months is allowable to the individual for the late renewal. Although in situation of delay, individuals are required to pay penalty charges. This renewal of trademark is also published in similar way done at the time of registration.
Ownership of registered trademarks is not essential to be assigned with 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 to 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, limitation of list of goods and services and other amendments will also be considered which do not have general identity of the mark in substantial manner.
Further, provision of Paris convention (1883), states that it is mandatory to make the use of trade mark for filing of applications for trademark registration or maintenance for the purpose of enforceability . However, interested parties are entitled to make request for cancellation of trademark registration in situation where owner is not in 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 applicability of similar law in all the foreign countries. Study of Sangar shows that, prior to this legal regime protection to the international brands or protection of trademark at global level was not an easy task. It is because; there were significant differences between rules and regulations of the different countries. Establishment of international convention had promoted uniform legal regimes that can be accepted by all countries in order to develop effective regime for the purpose of protection.
World Trade Organization (WTO) had established 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 WTO. This agreement had introduced legislation for protection of intellectual property in international trading system . 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 description of 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 as ethical or legal. However, special transition rules will be applied only in situation where developed country is not in 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 the certain minimum standards for the purpose of protection of intellectual property rights covered in it . In this aspect, members are in position to make selection of law which provides 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 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, agreement of TRIP had considered 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. Study of Yilma and Halefom (2015) shows that several provisions of TRIPS regarding protection of trademark were copied from Paris Convention for the Protection of Industrial Property .
Article 16 (1) of this agreement states that the owner of registered trademark must have the exclusive right to prevent third parties from making use of similar or resembling mark in situation where their act is not supported by owner's consent. However, above described rights will not be prejudiced 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 trademark is relevant in various situations. However, in all situations, fundamental question is of 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 trademark which was not registered in an appropriate manner. However, there are no specified criteria that in what circumstances 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, court had applied the provisions of prior use in order to make justified decision. Example of this applicability can be noticed in the case no.260/2003 by Cassation court of Dubai in their judgment of 2003. In this case court had confirmed that ownership right can be established through usage instead of mere consideration of registration.
Present study highlights description of civil protection provided by UAE to the 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 described case studies, it can be stated that international famous marks which are not used in UAE are in position to prevent registration of similar or resembling marks by third party under trademark law. However, local well-known marks are not in the position to invoke this law in case precedent. This aspect shows that 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.
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