Issues relating to trade name disputes clarified

United Arab Emirates

The Dubai Court of First Instance has ordered that a trade name that is identical to a well-known mark and trade name be deleted from the commercial register (Commercial Action 319-2007, July 17 2007).

The plaintiff - a well-known international commercial bank - filed an action against the defendant, a real estate company, for using the bank's registered trade name and mark as its trade name. The bank's name is a registered trademark in the United Arab Emirates (UAE) for, among other things, services relating to real estate. The defendant had registered its trade name with the Dubai Chamber of Commerce and Industry in 2004, prior to the plaintiff's registration of the trademark. However, the plaintiff was able to establish prior registration of its own trade name in the UAE in 1975. The defendant's argument was that there are substantial differences in the name and activities carried out by the parties and thus there is no confusion among consumers.

The Dubai Court of First Instance found for the plaintiff. The court held that the defendant had failed to prove that it had used the trade name prior to the plaintiff's registration and/or use of the trade name and mark. The court held that as use is a decisive factor, ownership of the mark and trade name thus lay with the plaintiff. Further, the court discussed the concept of 'well-known marks' thoroughly in the decision.

The real estate company has now appealed the decision. (Under UAE law, the names of parties in a dispute may not be disclosed until a final decision has been issued.)

The decision is evidence of the UAE courts' efforts towards extending the principles of trademark law to trade names. The UAE trademark law provides punishment for offering services under the unlawful use of trademarks. It also mandates the Ministry of Commerce to notify the names of owners of registered trademarks to the relevant authorities in each emirate that registers trade names. Nevertheless, there have been instances of local companies incorporating well-known marks in their trade names. As the UAE is one of the fastest growing economies of the region, the decision will hopefully set a precedent and give an encouraging sign to brand owners doing business in the region.

Simmy Rease, Al Tamimi & Company - Advocates and Legal Consultants, Dubai

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