The UAE Federal Law No. (37) of 1992 on Trademarks defines “well-known” trademark as trademarks that pass borders of the origin country of the trademark to other countries. These may not be registered unless upon a request or official authorization from the original owner.
To determine that a trademark is well-known, familiarity with such trademark by the concerned audience due to its promotion shall be considered. Well-known trademarks may not be registered to distinguish commodities or products dissimilar or non-identical to those distinguished by such trademarks if:
- Use of the trademark indicates to a connection between the commodities or services of owner of the original trademark.
- Use of the trademark would likely cause damage to interest of the original owner.
Many brand owners consider their trademarks as well-known, unfortunately, that may be the reason for losing their cases. If you think that your trademark is well-known, some standards should be taken in consideration. These standards will help you determine if your trademark is well-known. These factors are those which the courts take into consideration along with any circumstances under which the courts may be assumed that the trademark is well-known. The courts will consider documents (including expert report) and information submitted to it with respect to factors from which it may deduce that the trademark is well-known, including but not limited to the following:
- Amount of knowledge of the trademark in the applicable sector of consumers and users;
- Period, and geographical areas of registration, use of the trademark;
- Period, and geographical areas of promotion of the trademark (including advertising);
- The value of the trademark.
These standards are only guidelines to assist courts to define whether the trademark is well-known. These are not pre-conditions for obtaining that determination. Hence, the determination in each case will depend on the circumstances and proven facts.
Courts usually appoint an expert to determine whether the trademark is well-known. In practice, experts follow these standards in their research to determine if the of trademark is well-known. We, at Al Suwaidi & Company, have handled many successful cases on well-known trademarks. With submission of the proper documents to prove that trademarks are well-known, we obtained a final judgment from the Court of Cassation emphasizing our client’s grounds for its trademark to be classified as well-known and entitled to the mentioned protection under Article (4) of UAE Federal Law No. (37) of 1992. It is the advocate’s responsibility to lead the court to such understanding and recognition, and to increase chances of obtaining a judgment in the client’s favor.
Well-known trademark protection, in most cases, is from anything which could be considered as infringement or counterfeiting on that trademark, provided that they are likely to cause confusion to the consumers. Well-known trademarks are often protected, regardless of whether they are registered or not, in respect of services or goods which are the same as or close to be the same as those for which they have gained their reputation. In some countries, such well-known trademarks may, under certain circumstances, also be protected from dissimilar goods and services.
In litigation, the following laws and agreements, among others, are applicable and courts take them in consideration:
- Federal Law No. 37 of 1992 on Trademarks;
- Unfair Competition Law;
- Anti- Commercial Fraud Law;
- Paris Convention for the Protection of Industrial Property;
- TRIPS agreement
Finally, before approaching the courts for protection of well-known trademark, it is worth verifying first if your trademark matches the mentioned standards which should constitute your first priority in building your case.