28 Jul 2020

Hadef in the Courts: De-registration of a Three-Dimensional Trademark and Vehicle Design

Authored by: Rami Omar

In a recent case in the Court of Appeal, a Plaintiff brought a claim against our client, an international car manufacturer (the Defendant). The Plaintiff’s claim was to de-register the Defendant’s three-dimensional trademarks and vehicle design in relation to one of the Defendant’s vehicles (the Defendant’s Vehicle) which the Defendant held in five international categories. The Plaintiff’s claim was based on monopoly and non-distinction.
 

Background

This was a very complex case as:

  1. it was related to other international cases between the Plaintiff and Defendant concerning the de-registration of the same trademark;
  2. the trademark office in another jurisdiction had issued a potentially adverse finding;
  3. the case was referred to Hadef & Partners after the court-appointed expert had issued a report which was unfavourable to the Defendant; and
  4. there is a scarcity of court rulings in the UAE in relation to three-dimensional trademarks to which the Defendant could refer.
     

The Defence

The Defendant’s main points in defence were that:

  1. it was not evident that the Plaintiff manufactured or produced vehicles which allowed it to claim that there was monopolistic activity by the Defendant to design the Defendant’s Vehicle;
  2. The Plaintiff does not have any Three-Dimensional Trademark Registrations in any international categories/classes;
  3. there was evidence to support that the claim by the Plaintiff was ill-intentioned and intended to create confusion among consumers by manufacturing vehicles with designs similar to the Defendant’s Vehicle. This exploited the international reputation and the interest which consumers take in such designs and that any advantage to the Plaintiff is therefore illegal;
  4. the Defendant had a strong international reputation for the vehicle design which was and has long been used in the UAE and sufficient evidence was provided on the use of the design of the Defendant’s Vehicle since the 1950s. Conversely, the Plaintiff was only established two years ago in the UAE;
  5. The Plaintiff does not have any right or valid legal interest for cancelling the trademarks as the Plaintiff failed to prove that they have a registration in any of the relevant classes and the Plaintiff failed to establish any connection between its alleged activities and those classes. In fact, it was evident from documents submitted by the Defendant that the Plaintiff intended  to copy the Defendant’s famous design  in order to confuse the consumer;
  6. the Defendant’s Vehicle design was distinctive and its registration does not include any monopoly of a general design or a general name; and
  7. the Plaintiff referenced one of the few cases in the UAE relating to three-dimensional trademarks and the Defendant argued that the criterion  adopted by the court in that case is not applicable to the current case.
     

The Judgment

The Court of First Instance rendered its judgment, dismissing the Plaintiff’s case. The Plaintiff appealed the judgment to the Court of Appeal but the Court of Appeal rejected the Appeal. The plaintiff filed an appeal before the Court of Cassation and the final judgment is awaited.
 

Conclusion

This case is a rare example of a case in the UAE which deals with three-dimensional trademarks. It is interesting to note that the court took into consideration the legal standing of the Plaintiff, did not accept a theoretical interest as a ground for cancelling the Defendant’s Trademark, and the Plaintiff failed to prove any legal right over the relevant Trademarks.

If you require any more information about this case, please contact Rami Omar, Senior Associate, Walid Azzam, Partner or Abdulrahman Juma, Deputy Managing Partner and Head of Dispute Resolution, Dubai.

 
 

This article, including any advice, commentary or recommendation herein, is provided on a complimentary basis without consideration of any specific objectives, circumstances or facts. It reflects the views of the writer which may, in some cases, differ from those of the firm, especially in the developing jurisdiction of the UAE.