Court of Cassation considers likelihood of confusion

United Arab Emirates

The appellant is a high-technology company that owns the trademark on certain products registered in the United Arab Emirates. The respondents are a group of people accused of intending to sell goods bearing the appellant's trademark.

In addition to the prosecution's request that the respondents be indicted according to the penalties stipulated by the Trademark Law (37/1992), the appellant filed a statement of claim requesting that the respondents be ordered to pay jointly and severally the sum of Dh11,000 to the appellant as temporary damages. Further, the appellant requested the confiscation and destruction of the infringing goods at the respondents' expense and the payment of its legal fees. The court of first instance rejected the charges against the respondents and dismissed the claim. The appellant appealed, and the appeal court dismissed the appeal, affirming the decision of the first instance court and ordering the appellant to pay the respondents' legal fees. The appellant appealed.

Before the Court of Cassation, the appellant argued that (i) the appeal court's ruling was clearly erroneous because it did not apply the law, and (ii) the ruling lacked reasoning and did not conform to the evidence at hand. The appellant argued that it was wrong to dismiss the civil claim on the grounds that the forensic report, which carried out a technical comparison between the appellant's goods and those of the respondents, found a difference in the general appearance and design of the goods. The appellant further argued that Article 27 of the Trademark Law penalizes the act of:

"any person who … imitates a trademark in such manner as to confuse the public as to the goods and services distinguished by the original trademark or the similar trademark, and a person who knowingly uses a counterfeit or imitated trademark."

Therefore, the court's decision failed to take into consideration that the respondents should have known that the goods in their possession were counterfeit, considering their expertise in the trade. Further, the court also failed to examine samples of the goods seized by the appeal court.

In addition, the ruling was contradictory in stating that the seized goods did not display any trademark, but then concluded that the seized goods displayed the trade name of the appellant. Therefore, it was clear that the lower court confused trademarks with trade names, even though each of these areas is governed by separate rules.

Furthermore, the court did not respond in detail or by reason to the appellant's argument and did not address the reasons for adopting the first instance ruling. Therefore, the Court of Cassation held that the appeal court did not examine all aspects of the case (ie, evidence and arguments), so the ruling was clearly erroneous.

Regarding the issue of trademark infringement, the Court of Cassation stressed that the essence of this offence is to cause confusion to the public between two similar marks. It underlined the fact that, in considering imitation, the court must look at the similarities rather than the differences between the two marks. When considering trademark infringement, the main factor is the likelihood of confusion caused to the public. Furthermore, the court must consider the trademark as a whole and in totality, rather than the elements of which the mark is made. The Court of Cassation further confirmed that the similarities that give rise to confusion are a subjective matter to be considered by the court without further review, provided the reasoning supports the court's conclusion.

Accordingly, the Court of Cassation found that the appeal court's ruling was erroneous due to the incorrect application of the law, and remitted the matter back to the appeal court for thorough examination.

Karim El Helaly, Al Tamimi & Company - Advocates & Legal Consultants, Dubai

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