The Dubai Court of Appeal has held that three-dimensional shapes are capable of trademark registration and that Honda Motors Co Ltd’s registration for the shape of its distinctive multipurpose engine had been infringed. It is the first case of its kind to be heard in the United Arab Emirates (UAE).
In May 2005 Honda registered the shape of one of its famous multipurpose engines as a trademark.
It subsequently sought to enforce the registration against a trader selling copies of the engine. The defendant challenged the validity of the registration. In Dubai’s first decision relating to shape marks, the Court of First Instance found in Honda’s favour. The defendant appealed to the Court of Appeal.
Although the definition of a ‘trademark’ in UAE trademark law appears sufficiently broad to include shapes, the legislation contains no specific provisions on shape marks.
To assist it in its deliberations, the court appointed both a trademark and an industrial design expert. While the appointment of an industrial design expert may not have been strictly necessary, it enabled the court to understand the difference between shape marks and industrial designs.
The court ruled in favour of Honda on the issue of validity and found that its registration had been infringed. The court found that the shape of the engine, as a three-dimensional trademark, fell within the definition of a ‘trademark’ in the UAE Trademark Law (37/1992), as amended by Federal Law 8/2002, and was thus capable of registration and protection as a trademark.
The decision shows the Dubai courts’ increasing willingness to tackle complex IP issues, and represents a breakthrough for the owners of non-traditional trademarks in the region.
Sara Holder and Bassel El Turk, Rouse & Co International, Dubai