Friday, October 7, 2022

Trademark Infringement in the UAE

Trademark infringement is unauthorized or illegal use of a trademark that violates an individual’s exclusive right over the trademark.

The level of infringement relates to the similarity between the deceptive similar mark and original trademarks. A trademark lawyer can offer trademark search services, to avoid registration of a trademark similar or identical to the registered mark. A lawyer in UAE can also offer services to report a trademark infringement and to maintain the protection of the trademark.


Trademark Protection in UAE

Every company requires to protect its trademark from infringement. Trademark protection refers to protecting the trademark rights from counterfeiting and infringement.  There are a few points that can be taken into consideration to prevent infringement of the trademark.

  1. A trademark can be protected, if the mark is continuously in use
  2. An extensive research must be conducted under different classes to make sure your mark is not used by others if so, a legal action can be brought against the alleged party.
  3. A strong trademark can be efficiently protected. If the strength of the mark is low, it has more chances of being infringed.
  4. The trademark must not create any confusion between the brands among the consumers. This can affect the strength of the trademark.


Initial steps to prevent a Trademark Infringement in UAE

  1. Legal Notice

Legal notice can be served to the alleged person infringing your registered and protected trademark.  The legal notice can be in the form of a ‘Cease and Desist’ Letter that informs the alleged party to stop the illegal and unauthorized use of the previously registered trademark and not to resume the usage in the future.

  1. File a case

A case can be filed to the Ministry of Economy, wherein a committee handles trademark infringement cases. The judge of the committee can declare their decision in the case. If the claimant does not agree with the decision; the claimant may bring an appeal of the decision to the Court of First Instance, after which a further appeal can be heard in the Court of Appeal. The decision of the Court of Appeal can be appealed to the Court of Cassation. However, the judgement passed in the Court of Cassation will be final and binding on both parties.

In both these methods, it is advisable to appoint a trademarks litigation lawyer that can assist you with the arbitration and litigation process.

6 possible defenses for an alleged Infringement

  1. If the defendant has used the trademark previously in commerce
  2. If the previously registered trademark is Generic or Descriptive mark, the alleged party must file a case on the grounds of illegal registration against the previous trademark
  3. If the defendant has previously registered the trademark in a foreign country
  4. If the alleged party is authorized to use or has a consent from the concerned party that holds the rights of the previous trademark.
  5. If the defendant can prove the ‘Distinctiveness’ of the mark from other goods and services.
  6. If the defendant has registered and used the mark in good faith, the case of infringement can be defended under fair use.


Penalties imposed by law for Infringement in UAE

The following Articles of the Federal Law No 37 of 1992, specify the penalties imposed on the party for infringement.

  • Article 37, 38, and 43 govern the penalties that are applied to the party declared in infringement with a previously registered and protected trademark.
  • Article 37 highlights that the alleged party may be sentenced to imprisonment and a fine of not less than AED 5000 if the party has counterfeited, infringed or imitated a registered trademark that can mislead the public. This is also applicable if the party has acted in bad faith and offers for sale the product bearing the forged or counterfeited trademark in commerce.
  • Article 38 focuses on an imprisonment period for maximum one year and a fine amount between AED 5000 to AED 10000, if the party has used a non-registerable mark in the market or even on any paper that leads to the belief that the mark is registered will be subject to the above penalty.
  • By Article 43, all the goods bearing the illegal trademark will be confiscated and may be destructed. The Court may also publish the above judgements in newspapers to retrieve the goodwill of the previously registered trademarks.


Remedies offered to a party after Infringement of their trademark in UAE

  • Injunction
  • Seizure, confiscation, and destruction of the goods
  • The party that has incurred damages due to infringement may claim a suitable compensation for the damages he incurred.
  • Penalties incurred on the infringer
  • Temporary closure of the business for a minimum of 15 days and a maximum of 6 months.

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