The United Arab Emirates can trace its recognition of well-known trademarks back to 1973, only two years after it was established as a country and well before the enactment of the Trademark Law (37/1992). In a 1973 Abu Dhabi civil case, the court considered what may then have been a case of first impression – whether the agent of a Dutch company producing tinned milk under the well-known RAINBOW mark could prevent a local company from importing and selling the same product under the similar RAINSHOW mark (Thani Murshid African Near East Co v Al-Nawis Refrigerator Org, Abu Dhabi Fed Ct of Appeal, Case 3 20/72, June 24 1973, ‘Rainbow’, ICC 1981 p 883-90). In hindsight, the 1973 decision was written with aforethought and even a premonition of the proliferation of famous brands in the United Arab Emirates today: “This state is advancing continually and at an ever-increasing pace. Its trade is increasing correspondingly and goods of various kinds are arriving in it from all quarters. The consumer has grown accustomed to buying goods or materials bearing special and known marks and brand names. He buys them, especially if they are medicines or foodstuffs, because he has confidence in their quality and relies upon their safety and excellence... If a manufacturer or trader comes along and takes advantage of the trouble and expense which others have incurred so as to gain an advantage for himself and proceeds, in the hope of obtaining advantage and profit, to imitate or simulate a well-known trademark or brand, he not only violates the legitimate rights of the individual, but wilfully deceives consumers.” In 1981 the Abu Dhabi Federal Court of Appeal again recognised well-known marks when it affirmed a first circuit judgment in favour of McDonald’s. McDonald’s successfully enjoined the defendant’s use of its mark even where the defendant had obtained a trade licence to use the MCDONALD’S mark and was the first to use it in the United Arab Emirates (Abu Dhabi Fed Ct of Appeal, Case 240/80, ‘McDonalds’, March 18 1981, ICC 1982 p 658). The court commented that: “Plaintiff has owned this mark since 1970. Its products are being distributed throughout the whole world. Since defendant uses this mark in the same form, with only slight differences, and this form of use is apt to deceive the public as to the origin of the goods and their quality, he has misappropriated the plaintiff’s mark. It is irrelevant in this context that the mark is not registered in the United Arab Emirates; it suffices that it is internationally well-known.” Fame provisions in Trademark Law The 1992 UAE Trademark Law was amended in 2000 (Fed Law 19) and again in 2002 (Fed Law 8) to recognise well-known marks explicitly under Article 3, which prohibits the registration of marks that merely comprise a translation of a famous mark, whose registration would cause confusion. Article 4 further provides: “(1) A trademark that has an international reputation that exceeds the borders of the country from which it originates to other countries may not be registered except based on an application made by the original owner or based on an official authorisation of the owner. (2) The extent to which the mark is known by the relevant public as a result of its promotion is to be taken into account in determining whether the mark has reputation.” Article 4 also prohibits the registration of well-known marks even for non-identical or dissimilar goods or services if use of the mark would indicate a connection with the well-known mark or would damage the rights holder. The owner of a well-known mark may also protect its marks – whether registered or unregistered – through international conventions under the Agreement on Trade- Related Aspects of Intellectual Property Rights (Article 16) and the Paris Convention for the Protection of Industrial Property (Article 6bis) by virtue of the United Arab Emirates’ accession to the World Trade Organisation and signing of the Paris Convention, both in 1996. Owners of internationally well-known marks have prevailed in numerous actions in the United Arab Emirates, at both the administrative and court levels, to block infringers from registering their marks by demonstrating that their marks are famous through worldwide registrations, long-standing international use, significant advertising and marketing expenditures, and consumer recognition. Nationally well-known marks What about UAE trademarks that become well known through long-standing use and registration, but only within the borders of the United Arab Emirates? A 2012 decision of the Abu Dhabi Federal Court of Appeal addressed this issue, relying on the expert opinion in the first-instance appeal case to conclude that reputation within the borders of the United Arab Emirates only is insufficient to render a mark well known (Abu Dhabi Fed Ct of Appeal, Case 161/2012, ‘Ibn Battuta’, December 10 2012): “the renown of a trademark can be assessed based on two elements: the first is objective and takes into account the geographical --- where the trade mark is used in a way that a trademark would be considered as having a renown if the usage thereof exceeding the geographic boundaries of many countries or was known on the international market level, in addition to how old the trade mark is and the period of its usage. The second element is subjective and means that the trade mark is known to a substantial part of the consumers.” In its supplementary report, the expert pointed to the rights holder’s lack of evidence of use of the mark outside the United Arab Emirates, stating: “It is established that the international reputation of a specific trademark is the use of that trademark outside its national borders and not its reputation only. The purpose of referring to whether the trademark has a reputation or not is that a famous trademark is protected regardless of whether it has registered or not.” Conclusion Based on case law, an internationally famous mark that has not been used in the United Arab Emirates could prevent the registration of the same or similar mark by a third party in the United Arab Emirates, whereas a locally well-known mark without international repute could not invoke the law’s famous marks provisions. The UAE law is clear in its protection of internationally well-known marks and has been interpreted by at least one court to favour internationally famous marks over local marks.