14 Sep 2021

Hadef & Partners successfully defended a claim for deregistration of a trade mark in the Abu Dhabi Courts

Authored by: Rami Obeid

In Brief: 

  • Hadef & Partners successfully defended a claim against a client for the deregistration of a trade mark in the Abu Dhabi Courts despite being instructed during the final stage of the proceedings.
  • The Court of First Instance and the Court of Appeal accepted the Plaintiff’s claim against the client and ordered the deregistration of the trade mark.
  • Hadef & Partners successfully appealed and overturned the judgment of the Court of Appeal based on our client’s prior use of the trade mark in the UAE.

Background and Judgment

Hadef & Partners successfully defended a claim brought before the Abu Dhabi Courts for the deregistration of a trade mark based on the argument of prior registration and use of the Plaintiff’s registered trade mark.

The Plaintiff claimed that the trade mark registered under the client’s name is similar to the Plaintiff’s registered trade mark in respect of its appearance, sound, meaning and commercial impression. The Plaintiff also claimed that the trade mark registered under the client’s name is internationally recognised.

The Court of First Instance appointed an Intellectual Property ("IP") expert to examine the issues. The expert opined that the two trade marks are similar in terms of their name and purpose of use. Therefore recognising that the trade marks may confuse the target customers if the products were sold in the same market.

The Court of First Instance adopted the findings from the expert’s report in respect of the similarities between both trade marks and issued a judgment to deregister our client’s trade mark.

The client filed an appeal however; the Court of Appeal rejected the challenge and upheld the judgment of the Court of First Instance.

We were then instructed at this stage of the proceedings by the client to file an appeal with the Supreme Court of Abu Dhabi, which is the final stage of the proceedings. Our team adopted the strategy of establishing our client’s prior and continuous use of the trade mark in the UAE and its fundamental impact on the ownership of the trade mark. As a result, the Supreme Court of Abu Dhabi overturned the original judgment and remanded the case back to the Court of Appeal to consider this as a fundamental point.

During this process, we provided the Court of Appeal with further evidence regarding our client’s prior use of the trade mark and the Plaintiff’s failure to establish the use of its trade mark in the UAE.

Although the Court of Appeal continued their original position by emphasising the similarity between the two trade marks and potential confusion between customers, it was of the view that our client has the right of prior use of the trade mark in the UAE and that the Plaintiff failed to establish this point. As a result, the Court of Appeal issued a new judgment that rejected the Plaintiff’s claim for deregistration of our client’s trade mark.

The Plaintiff filed a subsequent appeal to the Supreme Court of Abu Dhabi challenging the judgment based on its prior registration and use of the trade mark in the UAE, and also on the basis that its trade mark is internationally recognised. The Plaintiff provided a consultancy report issued by a court accredited expert in support of its appeal.

For the second time, the Supreme Court of Abu Dhabi referred the matter to an IP expert to examine the issues. The Court appointed expert confirmed that the Plaintiff’s trade mark is internationally recognised and the prior registration of the Plaintiff’s trade mark in the UAE. 

We objected to the expert’s findings and appointed our own independent expert to challenge the original report issued by the Court appointed expert.  Following this, the Supreme Court of Abu Dhabi rejected the original report issued by the Court appointed expert and instead referred the matter to yet another  new IP expert.

After further submissions and discussions, the Court appointed expert issued a final report confirming that the Plaintiff’s trade mark has not been used continuously in the UAE and that the registration and use of the trade mark internationally is not sufficient to render it a ‘well-known’ trade mark.

The Supreme Court of Abu Dhabi agreed with the expert’s findings in addition to the defence put forward, and accordingly issued a final judgment which confirmed our client’s ownership of the trade mark and rejecting the Plaintiff’s claim for deregistration. 

Legal significance

The decision in this case is a good example of the significance placed by the Courts on the prior use and ownership of a trade mark in the UAE with regards to the concept of internationally recognised trade marks.

For further information on this case please contact Rami Obeid, Senior Associate, Dispute Resolution or for trade mark related issues, please contact our Head of Trade Marks & Brand Protection, James Dunne.

 
 
 

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.