The local UAE press reported yesterday that the Federal Supreme Court has rejected an appeal by a producer of Chinese herbal medicines against a decision of the Ministry of Economy to reject an application for registration of its mark in Chinese characters. The applicant for registration, who is not named, claimed that its mark is registered in many countries and is a famous mark internationally. Its mark therefore deserves protection including protection from registration by others without its consent. It claimed to be the original owner of the mark. The Ministry had rejected the application for registration of the Chinese character mark on the basis of a prior registration for the same mark in Latin (English) characters by another company (also not named). The Courts of First and Appeal supported the decision of the Ministry to reject application for registration of the Chinese character version of the mark.
The Federal Supreme Court is reported to have rejected the appeal and supported the rejection decision of the Ministry – and in doing so confirmed that a Chinese character mark and the same mark in Latin characters should be considered to be relevantly similar. Chinese character marks can raise complex issues. Certainly at the visual level Latin and Chinese characters are not similar. Their similarity is most likely focused on their sound – the Latin version of the mark mimicking the pronunciation of the Chinese characters. The Court therefore appears to be saying that marks that sound the same are relevantly similar and cannot co-exist on the register for the same products.
The applicant raised the argument that the prior mark which is stopping it from obtaining registration is improperly registered because it is just the Latin character version of its mark. The court appointed an expert to investigate the facts. The Court found, based on the expert’s report, that there was no evidence the applicant had used the Latin (English) character version of the mark anywhere in the world before the registration of it in the UAE by the other party. It is not clear whether the court expert also undertook an investigation of when the Chinese character mark was first used and whether it is indeed a famous mark as the applicant claimed.
The UAE trademark law contains several provisions for the protection of famous marks. The Article 3 protection is against the registration of marks that are considered to be not more than translations of a famous mark. Assuming the earlier registration was a mere translation of the Chinese mark (translation in Arabic includes transliteration), it would not have been necessary for the Court to consider whether the applicant was the earlier user of the Latin character mark. The Court could have found that the Chinese character mark was entitled to the protection of registration by finding that it had been used before the Latin character (translation) mark was filed and that the Chinese character mark is internationally famous. It seems that for the purpose of assessing the applicant’s alleged superior right to the mark, the Court treated the Chinese and Latin marks as different.
We shall have to wait to see the case report (which may be some time away) before we can properly study the reasoning behind the Court’s decision.
(Source: Al Emarat Al Youm (Arabic), 11 April 2016)