Honda enforces rights in three-dimensional trademark for engine

Honda Motors Co Ltd has successfully enforced its rights in the three-dimensional trademark for the famous GX engine.

In 2005 Honda registered the shape of its GX engine as a three-dimensional trademark with the UAE Trademarks Office (Registration 55925). The registration of this mark highlights the fact that the shape of an engine can function as a trademark - that is, it can distinguish the goods of one undertaking from those of another. The registration also allows Honda to pursue, in terms of the UAE Trademark Law, those who manufacture, distribute or sell goods that imitate the distinctive three-dimensional shape of the engine. The trademark was registered in black and white to protect the shape of the engine regardless of colour.

Training on Honda's three-dimensional trademark was given to Dubai Customs and Sharjah Municipality to prepare the enforcement of Honda's rights in the shape of the GX engine. Sharjah Municipality agreed to take action against traders dealing in engine which copy the shape of Honda's GX engine whether or not they bear the HONDA word mark. As many traders in Dubai store their products in Sharjah, Sharjah Municipality also agreed to target Dubai-based traders which store their products within the municipality's jurisdiction.

In August 2007 Sharjah Municipality raided two warehouses in Sharjah Industrial Area that belong to a Dubai-based trader. The municipality seized around 960 engines that imitate the shape of the Honda GX engine, but bore different word marks, on the grounds that the engines infringed Honda's three-dimensional mark. The trader is to pay a fine and the products are pending destruction.

The enforcement of Honda's three-dimensional mark in Sharjah is expected to become a useful precedent in the United Arab Emirates. It shows that the enforcement authorities recognize that consumers may distinguish some brands from others by the shape of the product, and not only by the traditional word mark. It also demonstrates that the authorities are aware that imitation of such marks can cause damage to the legitimate rights holder.

Sara Holder and Bassel El Turk, Rouse & Co International, Dubai