Trademark Law in United Arab Emirates
Date a) UAE Trademark Law, who enforces the law and the penalties available for infringement of the law (10 marks).
A trademark can be considered to a symbol, phrase or word used to indicate a certain sellers or manufacturers product and differentiate them from other products. For example, the trademark “Nike,” together with the Nike “Swoosh,” differentiates the shows manufactured by Nike among other companies such as Adidas in UAE and other countries in the world. Similarly, the trademark “Coca-cola” differentiates it from products that other companies such as Pepsi produce. With adoption of 2002 UAE federal Law no. 37 that deals with trademarks, trademark owners registered in different emirates as well as those who have unregistered trademarks, were called upon to re-apply of their trademarks with the ministry of Economy.
For the purpose of “passing off” action, there is no need of trademark registration. It is based on a goodwill obtained by the use of a trademark. On the other hand, selling of “counterfeit goods” is based on a constitutional right obtained registration of the trademark. For the case of passing off action, the goods of the plaintiff must not be same like that of the defendant; they may be similar or even different. For the case of selling counterfeit goods, the defendant use of the plaintiff mark may be in respect to the trademark of similar goods or that registered. When taking claims of counterfeit goods with respect to well-known trademarks, the barrier of goods are weakened in view of the trademark Act, 2002. The other difference between the two is that there must be similar or likelihood of confusion in passing off action similarity or identity of trademarks, but in counterfeit goods if the marks are similar or alike there is no need of further or additional proof.
In the case between Durgo Dutt Sharm Vs NP laboratories both in UAE, via the Supreme Court judgment, the difference between the two companies had been laid. It was noted that an action of a passing off is a Common Law remedy being an action for the deceit; this means that passing off a person of ownership of goods than that of another. According to the court, there was no action of selling counterfeit goods. According to the court’s decision, the action of statutory remedy conferred on the registered owner of the registered mark for the justification to the exclusive right to the use of the trademark.
One of the scenarios that passing off is actionable is when there is an extended form of passing off. This is where there exists a misinterpretation of a certain quality of a service or product causing harm to another goodwill product or service. An example of this is Erven Warnink V. Texos $ Sons Ltd., both from the UK. In the above case the marker of “advocaat” sued the manufacturer of the drink that resembles but not identical to advocaat, but has marketed into being advocaat.
Example of Case Summary and their Decisions
Case 1: Summary
Red Bull is a company that owes a registered trademark in United Arab Emirates. The Company’s trademark serves the right to the products name, symbol, design, and logo that distinguishes and identifies its product from other products. In this case, Red Bull urges that the competitor was noted misleading clients into believing that its newly manufactured product was Red Bull product rather was endorsed by the Company to its similar packaging hence took with it the qualities and benefits that Red Bull offers to its customers.
Case 1: Court Decision
Generally, the court took the decision that the competitor had adopted a product intentionally which appropriated part of the reputation and trade of Red Bull and also capitalized on Red Bull’s effective marketing and significant market share index. The decision reached by the court acts as a warning to other business that attempts to take advantage of the competitor or the reputation of the competitor’s product by duplicating some aspects of the brand.
Case 2: Summary
The plaintiff which is an international company French designer company. The company filed a civil lawsuit against a proprietor in Abu Dhabi for dealing on counterfeit Vuitton goods. The trademarks LV and LOUIS VUITTON are known internationally. The trademarks were identified on all the plaintiffs’ products. In addition, the company trademark consists of letter V and L are registered with the ministry of Commerce and Economy in UAE. The accused or the defendant was found selling leather bags bearing identical trademarks to those of the plaintiff and attempted to pass these counterfeit goods as coming from the plaintiff.
Case 2: Decision
By considering the compensation for material and moral damage incurred because of the trademark of selling counterfeit product, the high court in Abu Dhabi awarded the L and V Company Dh 50,000. In addition, the court upheld and imposed the seizure of the counterfeit goods from the accused and demanded their confiscation. The value of the seized goods was reduced from the compensation award. The court demanded the defendant to pay court fees.
Case 3: Summary
The plaintiff a United States company filed a case demanding the cancellation of the registration of a similar trademark and to the trade name as well that was registered to the name of a local manufacturing company and order the second defendant, the ministry of Economy to register to trademark to the plaintiffs name. the plaintiff claims that it had been using the trademark since 1989 and registered it in the home country since 1992, whereas the defendant the troubling trademark in UAE in 2000, both trademarks are registered in as Class 17. The plaintiff had note registered the trademark in UAE but claims that the mark is a known international mark and hence should be protected under Article 4 of trademark Law 37 of 2002, that states “Trademarks that are internationally known outside their home country jurisdiction in other states may be registered at the request of the owner”
Case 3: Decision
The Cassation Court considered the decision of both the Court of Appeal and Court of first instance by dismissing the claim of the United States Plaintiff and allowing the registration as well as the use of the disputed mark, despite accepting that the court noted that the mark was similar and belonged to the US plaintiff.
e) “Is UAE Law effective in preventing breach of Trademark?”
“Is the enforcement of the LAW effective and sufficient to deter future crimes?”(10)
The government of UAE has taken considerable steps to put in place trademarks Laws. The current approach is by ensuring that the UAE laws are relevant to the international bodies or organizations. The start of the protection began when there was an amendment of federal Law No. 37 of 1992 to No. 8 of 2002. The law contains a range of steps needed to register a trademark and the penalties for breach of the Law. The steps are as below:
Register you trademark
Apart from the initial trademark registration at the Ministry of Commerce and Economy, there are other options used to register the trademark at United Arab Emirates Customs authorities.
Potential Counterfeit Problems and How to Manage Them
Like other nations in the world, trademark counterfeiting has been a problem in UAE and the effect of which has been devastating. Companies should develop trademarks that are unique as well as clients or customers should consider checking goods for these unique marks to avoid buying counterfeit products.
d) The effects such breaches of Trademark Law may have on the Trademark owners, UAE Agents and in particular the consumers. You may refer briefly to TORT Law. (10)
When the trademark Laws are breached it means that goods and services that are not real will be distributed in the country amid the real products. The quality of such products is not determined hence customers are at risk of getting low quality products
To the trade owners, their goods or services will have mixed influence in the market since counterfeit products or services are always of poor qualities. Because of this, customer’s perception of the brand will commence leading to low sales.
The impact of the Law is greatly felt by the agents of the defendant company when cases go against them. In addition, they might end up losing their jobs incase such actions are noted or identified.
b) Findings and Analysis of Your Consumer Survey. (10 marks)
Laundry stores in UAE such as supermarkets as well as other stores are fond of selling counterfeit goods
Car manufacturing companies have also been noted selling counterfeit spare parts
Drug stores and pharmacies are the leading businesses selling counterfeit/ dangerous products to customers at most sedatives and paracetamols
Animal feeds are also found in counterfeit forms leading to ailments among animals in United Arab Emirates
Counterfeit soft and hard drinks are also noted being sold in bars as well as refreshment places
From the findings, it is true that customers in UAE and all the other emirates are faced with serious problems buying counterfeit goods from different stores. The customers are ignorant of the goods hence media address should be raised to solve the case. Among the counterfeit products, other are considered dangerous such as soft and hard drinks, animal products, Automobile spare parts, and consumable foodstuffs
c) Your 10 examples of ‘Counterfeit Goods’ with 5 additional examples, from other countries, obtained through internet research (15 marks)
Product United Kingdom United States United Arab Emirates
Soft The rate of use of this is 10% The rate of use of this is 2% The rate of use of this is 60%
Consumable Food Stuffs The rate of use of this is 20% The rate of use of this is 1% The rate of use of this is 50%
Automobile Parts Rarely Nil The rate of use of this is 30%
Animal Products Nil Nil The rate of use of this is 70%
Hard Drinks 5% nil 70%
Cookies 2% 5% 30%
Electronic Rare nil 88%
Laundry nil nil 60%
Music Rare Rare 40%
Beer Rare Nil 78%
The above table indicates that United Arab Emirates leads in the number of counterfeit goods sales. The use of counterfeit is limited in UK and rare in United States. This is because the latter two countries have pronounced laws governing trademark infringement.
Recommendations for ALL stakeholders that will lead to the reduction in the number of counterfeit goods (FAKES) being sold in UAE. (10 marks)
This paper offers two recommendations that cater for all the stakeholders in order to reduce the impacts of trademark breaches in UAE and all the other emirates
The government should come up with policies that permit law enforcement agencies such as the police to apprehend suspects of trademark breaches and to ensure that these cases do not take long to be investigated.
The states should also increase fines imposed to trademark offenders to prevent others from taking suit.
There has been no country or region in the world that has completely eradicated trademark breach. However, because of the amendment of Trademark Law United Arab Emirates has improved its efforts towards curbing the problem. Future considerations should be taken to ensure that the enforcement of Law should be included to all the stakeholders such as the customers.
Grant, Jim, Fatema Shabbir Golawala, and Donelda S. McKechnie. “The United Arab Emirates: The twenty‐first century beckons.” Thunderbird International Business Review 49, no. 4 (2007): 507-533.
Hmood, Ali K., Z. M. Kasirun, Hamid A. Jalab, Gaz Mahabubul Alam, A. A. Zaidan, and B. B. Zaidan. “On the accuracy of hiding information metrics: Counterfeit protection for education and important certificates.” International Journal of the Physical Sciences 5, no. 7 (2010): 1054-1062.
Kakish, Hazem Farah, and Simmy Flame Rease. “How to Tackle Fakes in the UAE.” No. 180 Man
Kheir, Nadir, Manal Zaidan, Husam Younes, Maguy El Hajj, Kerry Wilbur, and Peter J. Jewesson. “Pharmacy education and practice in 13 Middle Eastern countries.” American journal of pharmaceutical education 72, no. 6 (2008).
McManis, Charles R. “Proposed Anti-Counterfeiting Trade Agreement (ACTA): Two Tales of a Treaty, The.” Hous. L. Rev. 46 (2009): 1235.