03 May 2010

HADEF IN THE COURTS: A recent trade mark decision which highlights the benefits of registering in the UAE.

Authored by: Walid Azzam and Karim Mahmoud

HADEF IN THE COURTS: a recent trade mark decision which highlights the benefits of registering in the UAE.

Monthly report based on practical experience of our team of advocates in the courts of the UAE. This month, Tarik El-Bakri discusses a recent trade mark decision which highlights the benefits of registering in the UAE.

 
A review of the Federal Court of Cassation judgment No. 682/2009 (delivered on 29 March 2010)
 
The plaintiff, a US company, filed suit requesting the cancellation of the registration of a trade mark that is identical to its own trade mark (and to its trade name as well) which was registered in the name of a local manufacturing entity and to order the second defendant, the Ministry of Economy (as the Registrar) to register the mark in its (plaintiff's) name.
 
The plaintiff claimed that it had used its trade mark since 1987 and registered it in its home country since February 1990, whereas the defendant registered the offending mark in the UAE in March 2000. Both marks are registered in Class 17 for "adhesive tapes". The plaintiff had not registered its mark in the UAE, but claimed that it is "an internationally well known" mark and hence should be protected under Article 4 of Trademark Law 37 of 1992, which provides (in translation) "Trade marks that are well known outside their home jurisdiction in other countries may only be registered at the request of the original owner".
 
The Judgment
The Court of Cassation upheld the judgments of both the Court of First Instance and Court of Appeal, dismissing the claim by the US plaintiff and permitting the continued registration and use of the disputed mark, despite accepting the court appointed expert's finding that the mark belonging to the plaintiff was indeed an internationally well known mark. The Court reasoned as follows:

  1. It is a settled principle of the Court of Cassation under what it termed the old trade mark law (i.e., of Trademark Law 37 of 1992, before being amended by Law No. 8 of 2002) (the new trade mark law) that use of a trade mark to distinguish a particular product does not prevent others from using the same mark for other products that are sufficiently different so as not to cause confusion between them in the minds of consumers, even if the trade mark in question is an internationally known trade mark.
  2. The alleged offence of registering the plaintiff's mark took place in 2000, hence the Court continued to apply the provisions of the old trade mark law on the basis that the alleged offence took place before the 1992 Trademark law had come into effect..
  3. While both marks were used to distinguish adhesive tapes, the Court observed that the plaintiff's tapes were of universal application, whereas defendant's tapes were used in the specialised field of heating and cooling insulation. The Court then went on to conclude that the products in question are different in appearance and application and are used by different categories of consumers and therefore there is no likelihood of confusing the consumers, given the specialised nature of the consumers of the defendant's tapes.


Discussion

  1. Prior to the case being referred to the full panel of the Court of Cassation, it was put before a consultative chamber at the Court's civil circuit. The consultative chamber had recommended that the established position of the Court (see (1) above) on this matter be reversed, arguing that the prohibition contained in Article 4 of the old law is an absolute one which prevents the use by others of a internationally known trade marks to distinguish products and services that are identical or similar to the ones upon which the well known mark is used. However, full panel of the Court decided, as we have seen, to uphold what it described as the established position of the Court in this regard.
  2.  
  3. The Court made reference to Article 10 of the old trade mark law to argue that the implication of said article is to allow the use of a mark similar to one already registered, provided they are used on products that are sufficiently dissimilar so as not cause confusion. However, under the old trade mark law, the prohibition is on registration of an identical or similar mark for the same class of products or services, and not for identical or similar products per se. Though it is not a defined term in the old trade mark law, "class" is used in the same manner as under the Nice Classification System, which roughly corresponds to "category". This can be seen in the attachment to the implementing regulations of the old trade mark law which provides a list of "classes" under which trademarks may be registered in the UAE. Put another way, the Court seems to have applied the term "class" to mean "the same" or "identical" products or services, whereas "class" does not refer to a particular product, but to a category of products. Accordingly the Court proceeded to make the distinction between the two types of adhesive tapes and to assume that different categories of consumers will tend to use each of them, thereby negating the possibility of confusion arising between the two products.
  4.  
  5. The Court had an opportunity to comment on its position had it been applying the new trade mark law. In its judgment, it acknowledged that under the new trade mark law protection for internationally well known trade marks has been extended to include usage of "dissimilar" products and services, or situations where usage may cause harm to the interests of the original mark owner. However, the Court clarified that such extension of protection had no bearing on the case at hand since the new trade mark law did not apply (because the alleged offence took place prior to the implementation of the new trade mark law), and then went on to state that "as such, there is no room for departing from the settled principles before this court – while continuing to apply the provisions of the old trade mark law – that use of a trade mark to distinguish particular goods does not prevent others from using the same mark to distinguish other products that are so different so as not to cause confusion between the two, even if the trade mark was internationally well known" (in translation).

Conclusion
This decision highlights the importance of local registration of trade mark rights as a first line of defence against trade mark infringement and the risk considerations if a trade mark owner's strategy is to place complete reliance on the international notoriety of a trade mark for ensuring future protection of such rights